Toll Free Support: 1.866.445.6925

We Got A Trademark Infringement Letter!

By jameszol
Published on January 23, 2008

A couple weeks ago I received a letter from semvironment Interactive, Inc. - a website design company from LA. (www.semvironmentinteractive.com)

This is their letter to me:

Dear James C. Zolman,

semvironment Interactive, Inc. is a Los Angeles-based interactive agency with 12 years service to the online advertising industry. semvironment owns the subject Trademark Registrations Nos. 2,411,996 and 2,411,997 for online advertising services including designing, implementing, creating, and maintaining Web sites.

This letter will serve as formal written notice that semvironment considers your use of the name semvironment is a trademark violation.

We ask that you please take notice and the appropriate actions to avoid a Trademark Infiringement case filed on our behalf by counsel. That would require a name change away from the trademarked “semvironment” as you were prior to August 2007. We will afford you 30 calendar days to cooperate with this request prior to us taking legal action.

If you have any questions or concerns, please contact Justin Woo, CEO and Owner/Founder of semvironment Interactive at 310-836-9777.

Back to me here…I found their Trademarks here.

I think it is funny that the trademarks do not even mention advertising or marketing…like their letter implies.

And I like to think I’m a reasonable person to deal with. Here is how I would have handled the perceived situation -

Pick up the dang phone and call the CEO of the company and simply state that I’m genuinely interested in helping a business succeed so I wanted to notify them about trademarks and I would ask them to simply review a couple trademarks and ask them for their opinion. Eventually, if we did not agree on something, I would politely tell them that we are at a point where it might be best to use legal communications from this point forward…etc.

To be quite frank, I am pissed that people feel like they have to immediately turn to (fake?) self-authored legal letters…I mean, if I were to send a “legal” letter I would have my attorney sign it with their credentials instead of my own. Yes, the letter was signed by the “President” of semvironment Interactive, Inc.

What happened to having the balls to actually SPEAK to somebody about a problem - even if it’s through a phone!?!

On another note - it is quite flattering that a California company feels like an Idaho company is a threat to their trademark/customer base. :)

What do you think?

Do you think I am infringing on their trademark or are our business names fair game?

Is there really a “likelihood of confusion” between our company names and services?

How would you act if you thought somebody was infringing on your trademark? Am I out of line here?

Here is the flip side -

Perhaps, and I will give them credit for this, they believe a semi-personal “official” communication (which probably is legal and could hold in court) was the most appropriate action to take first. Maybe it was the right thing for them to do…and I’ll admit I’m a handshake “man of my word” kind of a guy so this type of communication simply rubbed me the wrong way…just thought I would let you know that I AM striving to see things from their perspective and I have consulted with and I am communicating with 3 attorneys regarding this subject.

Thoughts?

Update Friday 1/25 3:45 PM: Justin just gave me a call - and I’m glad he did. He clarified that the letter was meant to be a semi-formal notice that legal means will probably be pursued so it was not authored by his attorneys. He also mentioned that they have been doing SEO and PPC for a long time. I mentioned that we’re in a completely different league and we aren’t targeting the same customers but he said that he really felt we were infringing on the mark still and he would pursue legal action if we didn’t change the name. He wasn’t very negotiable and didn’t want to explain much so it was a short phone call…I don’t blame him - I can kind of understand and see where he’s coming from and I told him so.

I guess we’ll see what happens. :)

Bookmark or Share It Here:


  • Sphinn
  • del.icio.us
  • StumbleUpon
  • Technorati

If you enjoyed this post, make sure you subscribe to our RSS feed or get email updates whenever we post anything new!


Related posts:

13 Responses to “We Got A Trademark Infringement Letter!”

  1. PPC Whiz (7 comments.) Says:

    That sucks, though this seems to be more of a scare tactic than anything. They look like a medium sized company who may have deeper pockets than you (no offence intended) so getting into a legal battle might not be in your best interest. My advice, head over to http://www.seomoz.org, post this info and see if Sarah Bird weighs in. I believe she is a new SEO Moz person and a trademark lawyer. Who knows, you could get the SEO community to rally around your cause!

  2. jameszol Says:

    You’re right…they probably do have deeper pockets - no offense taken.

    I thought about Sarah Bird at SEOmoz while writing the post…I wondered what she would say about it. Perhaps I’ll shoot a quick email out requesting a post on trademark infringement issues and cases. I think that is one of the most valuable recent additions to the SEOmoz blog - a legal blogger. Gotta love that for our industry!

    Thanks for weighing in Adam!

  3. Sarah Bird, Esquire (1 comments.) Says:

    Hi James! Thanks for contacting me.

    First, I am sorry that you are having this TM issue. What a terrible pain in the rear.

    Anyway, I am planning on doing several trademark posts in the near future, so you should continue to check the blog. Trademark is a hot topic for many of our readers.

    I wasn’t able to pull up the actual registration page because the link on your post didn’t work. However, assuming that the company is registered for semvironment and they provide internet marketing services, you could have a problem. If you were in different industries, you wouldn’t have the same problem. Also, if you had started using the name semvironment before them, then you would be in a much better position. Remember that the Courts would look at whoever started using it first. If you started using semvironment after they federally registered the name, then they have more right to it than you do.

    That said, there are many defenses and exceptions in the law. Thus, you still may have plenty of good arguments. This is a situation where I recommend you consult with a qualified attorney who can give you detailed advice.

    In the mean time, if you haven’t looked there yet, check out the US Patent and Trademark Office for FAQs and other info about Trademark law. (http://www.uspto.gov/main/trademarks.htm)

    Reviewing this information will help you be better prepared to meet with an attorney. Remember that timing is very important so be sure you know when you first started going by semvironment before you see the attorney.

    Best of Luck!

    Sarah

  4. jameszol Says:

    Thank you for stopping by Sarah! We’re looking forward to your trademark posts!

    BTW - Link is fixed now…but the session might expire again soon.

  5. Costa Rica SEO (6 comments.) Says:

    I’ve made it easy and uploaded the certificates to scribd:
    http://www.scribd.com/doc/1561180/Registration-Certificates

    The trademark states:
    “For: Computer services, namely, designing, implementing, creating and maintaining web sites for others, in class 42 (U.S. CLS. 100 and 101)”

    Class 42 from:
    http://www.lawyers-abogados.net/en/Resources/trademark_international-classes-goods-services.htm

    Class 42 Services, scientific, research, design.

    Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

    Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities. Such services are provided by members of professions such as chemists, physicists, engineers, computer specialists, lawyers, etc. While medical research remains within Class 42, medical treatment services are reclassified into Class 44.

    So it appears that your business would fall under class 35 which is: advertising; business management; business administration.

    Keep in mind that I am no lawyer, but I would think that if you state that your business is one of advertising only, then you should be free from their scope. Though that’s your lawyers job to prove, and their lawyers job to disprove.

    Hope that helps.

  6. jameszol Says:

    @Cost Rica SEO

    Nice work!

    I remember doing some research on that but I didn’t recall the class sections or exact details - that is very important and I wonder how lawyers would prove/disprove that point?

    Very interesting and thanks for helping!

    Also, nice find with scribd - I never heard of them until now…very useful!

  7. Costa Rica SEO (6 comments.) Says:

    Scribd is a great place to share documents, but they don’t seem to like my e-book files. I’m hoping that all of my files become public soon. Until then I’ll probably write a few SEO docs and keep them there. Just need to get a few more client projects off of my plate first.

    Good luck with this, and I’m glad that I can help. Thanks for keeping the good info flowing.

  8. Justin Woo (2 comments.) Says:

    James:

    Matt Beshear, the president of semvironment Interactive, is a member of the California Bar Association (so he’s a lawyer). If you do not change the name by the date specified you will be contacted by Morgan Lewis our IP Attorneys (they are also lawyers and they charge a lot) Just do the right thing and change the name - you have only been using it for a couple months and i guarantee you will lose - don’t waste our time and yours. We all have better stuff to do.

    Have a great weekend,
    Justin

  9. jameszol Says:

    @Justin

    If Matt is an attorney then I stand corrected. Thanks!

    I agree - we do have better stuff to do.

    Thanks for stopping by and I appreciate your remarks.

  10. jameszol Says:

    @Justin

    BTW - are you going to SMX West?

  11. Justin Woo (2 comments.) Says:

    @James

    Nope not going to SMX…

    Also, leaving your blog now to start enjoying my weekend…

    Please be reasonable - so i can add you back to my “good people/companies” list and who knows maybe we can direct you some SEO/PPC business instead of sicking the hounds on you… LOL

  12. Open Letter To Justin Woo at semvironment Interactive, Inc. | semvironment Says:

    [...] consulting with our attorneys within a few days of receiving your trademark infringement letter, we were informed of these [...]

  13. Sometimes a simple phone call goes a long way… Says:

    [...] as it was in violation of a their trademark. I won’t go into the details but encourage you to read the letter he received here about an apparent trademark infringement on the name [...]

Leave a Reply

About Semvironment

Learn more about Semvironment, one of the world’s top pay-per-click marketing management companies.

Press Center

Feature articles and noteworthy instances of Semvironment in the news.

Hall of Fame

Read our most talked about news stories and PPC management training guides.