FReeper Lawyers help needed: Website title has come under dispute

Myself | 4/15/02 | Invoman

[invoman]

Today I received a threatening e-mail:

< it has come to our attention that you are using the name "Minnesota Fishing" for your website. That is a registered trademark (registration # 29748) owned by ______.

Please remove the name immediately from http://www.invominnesota.com/ and any other materials or mediums where you may be using it, or action will be taken to the full extent of the law.

You are responsible for any damages and any deceptive practices damages as well as monetary awards to World Wide WebResults the courts may order due to your misleading use of this trademarked name.

. You are further instructed to notify anyone whom you have done business with, using the "Minnesota Fishing" trademark, to inform them that it is owned by World Wide WebResults and that you are not in fact affiliated with the "Minnesota Fishing" Trademark in any way.

You have 3 working days to comply or further action will be initiated.

Sincerely,
___________>>>>

[CharacterCounts]

You have mail

[Swordmaker]

I did a search on his site for the phrase "Minnesota fishing" and found not one hit.

His site is "Fishing Minnesota ®" and that is what he is claiming is a 'registered trademark'. The positioning of the two words in that reverse order MAY be a copyrightable and/or a trademarkable phrase... but I doubt it. It certainly does not permit him to control the usage of "Minnesota fishing" anywhere and everywhere it might occur.

The use of a fictitious business name such as "Minnesota Fishing Company" gives the holder of that fictitious name the right to prevent OTHER businesses from using "Minnesota Fishing Company" but not any of the words or combinations of words that are not the complete business name, i.e. "Fishing", "Company", "Fishing Company" and "Minnesota Fishing" ARE NOT protected.

[Gorzaloon]

His site is "Fishing Minnesota ®" and that is what he is claiming is a 'registered trademark'.

It had damned well BETTER be registered with the USPTO if he is using the (R) mark.

Otherwise, he needs to read about what is going to happen to him;

Hint:

He is going to be much too busy for a while to bother bullying people to try to monopolize a domain name.

Even if he has an application in, he cannot use that mark until the Trademark issues!

If that Registered Trademark does not show up on the USPTO database, forward it all to the USPTO and let them go after him for fraud.

[Swordmaker]

Note the third listing on this search taken from the Secretary of State of Minnesota's official web site:

---------------------------

BUSINESS ORGANIZATIONS INQUIRY

   DA Home   UCC   Business Services   Account   Session Briefcase   Help/FAQs   About   Login  

NAME AVAILABILITY SEARCH

All name availability checks are preliminary, and we advise that you not move forward with any business use of the name or process any government forms until you have confirmation your name has been filed.
This search was performed on 4/15/2002 20:22 with the following search parameter:
PROPOSED NAME : Minnesota Fishing
click here for Entity Type ID definitions.

Records 201 to 240 of 401        >">  

ORG ID	Name	Entity Type ID	City	State	Cross Reference
1H-47	Minnesota Fish and Wildlife Employees Association	NP	St Paul	MN
94043	MINNESOTA FISHERIES	AN	Anoka	MN
29748	Minnesota Fishing & logo design	TM
1P-702	Minnesota Fishing Federation	NP	Grand Rapi	MN
1V-326	The Minnesota Fishing Hall of Fame	NP	Walker	MN
1I-468	Minnesota Fishing Museum & Education Center	NP	St Cloud	MN

[Swordmaker]

More detail from the Secretary of State:

--------------

BUSINESS ORGANIZATIONS INQUIRY - VIEW ENTITY // // // // //= 4) { win.window.focus(); } } // End -->

   DA Home   UCC   Business Services   Account   Session Briefcase   Help/FAQs   About   Login  

BUSINESS ORGANIZATIONS INQUIRY - VIEW ENTITY

Filing Number:	29748	Entity Type:	Trade and Service Marks
Original Date of Filing:	3/14/2000	Entity Status:	Active
Date First Used:	11/30/1999	Type of Mark:	S
Classification Number:	35	Use in connection with:	advertising via the internet, internet development
Entity Date to Expire:	03/14/2010

Name:

Minnesota Fishing & logo design

---

DA Home | OSS Home | Contacts | Privacy Policy | Terms & Conditions

Use of this site and services indicates your acceptance of the Terms & Conditions of Use.
©Copyright 2001 , Minnesota Office of the Secretary of State. All Rights Reserved.

[boris]

For years, IBM fought against being called "Big Blue."

There was a fellow who refurbished and remarketed used IBM equipment. He called his company "Big Blue Enterprises" and was in business for years. Then he received a letter from IBM's lawyers. He folded, because he just didn't have the resources to fight.

And as I am fond of retelling, Oleg Cassini sent a menacing letter to JPL, reminding it that "Cassini" was its trademark. Evidently they assumed that the spacecraft was named after the designer, and never heard of the astronomer...

--Boris

[Swordmaker]

Note that he has also registered "Fishing Minnesota & Logo Design" under #29747!

"Minnesota Fishing & Logo Design" is #29748

[Elsie]

His site is titled "Fishing Minnesota". Guy is dyslexic!

If he was a dry air nut and old mine lover, the movie Finding Arizona would have REALLY driven him nuts!

[SwinusMaximus]

He's fullashit. And beside that he doesn't know the proper Latin plural form of medium. Whadda loser!

I think you can probably torque his nuts by reporting him to your ISP and his ISP. Most ISPs take a very dim view of their wire being used to threaten someone, particularly if the claim is a bogus one.

[Enlightiator]

You are wrong. If it were trademarked and valid then he would be liable for its unauthorized use.

I'm sorry, that phrase is already trademarked, you will be sued for using it now. Seriously, it is you that is wrong. A trademark can't be used to prevent people from using common phrases, when those phrases aren't used to sell a product that could be confused with the trademark holders specific trademark. Not a lawyer, but I can read. Try it.

[willyone]

Exactly. Tell him to fax a copy of the date he registered his site and just what protections were granted with it. Otherwise ignore him until he legally serves you. Or better yet work out a mutually satisfactory compromise. Lawyers cost big bucks and the use of them for minor matters is best avoided.

[Beep]

I don't know about trademarks and licenses and such, but I can tell you that titles cannot be copyrighted. Conceivably, there could 16,000 songs all titled "Blue Velvet," and every one of them would be legal. Same with book titles, poetry titles, etc. Titles are titles are titles.

I don't know if this helps, but I figured it couldn't hurt?! Keep the faith!!

[invoman]

So the guy has a logo...registered in Minnesota. I'm not using 'his' logo.

I seem to be in good shape, what do you think?

[invoman]

Regarding #53....I didn't think so.

Thanks!

[invoman]

Yes, he is using a federal trademark-and I can't find it anywhere.

So he may be in big trouble for this?

[VA Advogado]

Wouldn't the first thing to happen is a letter from HIS lawyer? Cease and decist?

Why dont you follow up with the writer of the email and see if he can provide you more documentation. Do this before you get an attitude that will result in you being sued and they take your house.

[invoman]

I think the less contact I have with him...the better. He not exactly known for ethical behaviour. Even his existing customers have heard of his shady business practices.

[far sider]

"Today I received a threatening e-mail: " It has come to our attention that you are using the term "threatening e-mail" in your correspondence. That is a registered trademark. Please remove the term immediately from all materials or mediums where you may be using it, or action will be taken to the full extent of the law. You are responsible for any damages and any deceptive practices damages as well as monetary awards to World Wide WebResults the courts may order due to your misleading use of this trademarked name. You have 3 working days to comply or further action will be initiated.

[Cboldt]

Seems you are in good shape, yes. The TMs in question are words AND LOGO. If you don't use the words AND LOGO, you are not infringing. The use of AND LOGO is what permits some folks to trademark phrases that are otherwise in common use -- the LOGO sets the mark apart.

Also, his use of the (R) is not permitted, because the mark is not federally registered.

If I was in your shoes, I'd ignore this twerp's letter. Make him work/take the next step. Don't even acknowledge receipt of the notice.