Legal, Tax, and Accounting April 28, 2020

So we got a cease and desist...what now?

Yarty @yartyk

Has anyone ever received a cease and desist order for your company name?

We just received one and are kind of shocked. Really bad timing given covid-19.

We'll be speaking with a lawyer, but in the meantime, if you're willing to share your experiences, it would be greatly appreciated.

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    Twice now, once by the owners of the copyright for Godzilla and another by Groupon.

    Since the "zilla" site wasn't making money, I reminded them of that, and they never followed up.

    With Groupon, we changed our name entirely and that vanished as well. Also, ~7m$ exit, post-C&D, so I wouldn't get too hung up on your name, unless you explicitly were trying to snake their traffic.

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      Thanks Josh, no we didn't even know this other company existed. I did confirm they do have a trademark on the name.

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        Yeah, it happens, unless you want to grind it out in court, best bet is to rebrand and comply. Generally speaking, companies will give you a period of time to transition before potentially relinquishing / letting domains expire and stuff like that.

        Sucks, but way better than trying to fight it, especially considering they have already done the due diligence on the trademark.

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          This is very strange to me.

          These domains are legally bought and 100% okay, aren't they?

          Can you keep the domain, but change the company name?

          Can you change company name, but leave your name as a name of your PRODUCT?

          What are the rules? What exactly do they own?

          This just boggles my mind, lol, I somehow can't get over it.

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            Buying the domain name is equivalent to going to your local print shop and buying a sign. It gives you no rights to a potential trademark.

            In this situation, I would work an agreement to have the original domain name redirect to the new one explaining the rebranding.

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            These domains are legally bought and 100% okay, aren't they?

            There's no checking done when you buy a domain, especially not for trademarks.

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            Can you keep the domain, but change the company name?

            Comes down to likelihood of confusion. If you operate in different realm and confusion is unlikely then OK.

            Trademark does not give automatic rights to domain name but there are cases where registrars have buckled to "pressure".

            On the other hand companies can be fined for trying to strong-arm domains from legal owners
            https://en.wikipedia.org/wiki/Reverse_domain_hijacking

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            Depends on the circumstances, if the company is ready to lawyer up, good chance they'll want you to transfer the domain to them. Have seen scenarios where they buy the domain off of you (at or around cost)

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          This comment was deleted 7 months ago.

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    I've seen npm packages renamed because of trademark violations. Given that the alphabet has a limit on the amount of words that can be formed (2^26 ?) and an even smaller limit on valid words, I'd say trademark law has a looming crisis.

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    Get a lawyer and waste tons of time and money.

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    Yeah, I got one over my name. It's actually quite common. Can you give us more detail? Based what I went through I'll try to weigh in if it's worth talking with a lawyer or just giving in.

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      Thanks, appreciate the help. We registered our domain names and got all relevant social media channels, in addition to getting our company registration done. Turns out, there's another company out in the west (we're in MA) with the same name and trademarked it. However, our approach and branding are very different.

      We just had no idea this company even existed, otherwise we would have opted for a different name. Lesson learned: check for trademarks.

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        Do you know of any tool that allows to search if a specific name is trademarked?

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        If they have it trademarked then they are required to send you that cease and desist. If they don't enforce it, they lose the trademark.

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          Actually, reminds me... @onemanparty did you look into their trademark? Are you in the same space or are you simply using the same name? Very well could have some wiggle room there if say, they sell brooms and you make some sort of SaaS that's unrelated to brooms (bad example, but whatever).

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            Thanks @joshtronic, really appreciate the help. I did find the trademark on the US trademark website, and we are in the same space (accounting). I'm leaning towards just changing the name. All of this is just really bad timing.

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              Same space. Trademarked name. You gotta change.

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                Thanks Rab, we ended up changing it.

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      Lol, I was just writing that I am not sure it's possible for that to happen in Poland.

      If you are polish company is it possible to be sued by a company from States?

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        In my case the company was French, and they had a European trademark.

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          Well since we are in EU now, do we fall under the same rules?

          It seems literally CRAZY to me.

          Also, where do I check trademarks? Is there a list of trademarked names?

          Also, how do I trademark my name in EU and States? How difficult and expensive is that?

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            I don't know the answers to most of those questions I'm afraid, but here you can check european trademarks: https://euipo.europa.eu/eSearch/#basic/1+1+1+1/010515922

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              Thanks.

              Your story sounds instane to me.

              I would understand if the company name was very specific, and yours was similar and you had similar logo etc.

              I would imagine these are the cases this law was created for.

              But f***ng "mention"? That's just absurd, you can't just own a word lol.

              Things like this really piss me off.

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                Facebook copywrited "book". Such is life, what can we do?

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                  Well, I guess we can only change the name lol.

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