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got a letter from a laywer. some help would be appreciated

Discussion in 'BlackHat Lounge' started by syek1, Sep 30, 2011.

  1. syek1

    syek1 Regular Member

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    okay so i have a site that sells a supplement which i produce myself and then sell it.

    Now lets say my products name is "winn-x" and this companies products name is "w-inn". Is that trademark infringing???

    I am going to see a lawyer first thing monday, i had no idea i was infringing and trademarks.

    I live in south africa, and they are in america, dont know if that helps me

    this is the letter


    "This firm represents **** Distributing, Inc. (“****”) with respect to the
    protection of its intellectual property. It has come to our attention that the registrant
    of the website at <http://www.****> (the &#8220;Infringing Website&#8221;) is
    offering nutritional supplements under the mark **** (&#8220;Infringing Mark&#8221;), which
    unlawfully infringes on **** valuable **** trademark.
    WHOIS records indicate that the Infringing Website is privately registered through
    Domains by Proxy, Inc. Because of the similarities between **** registered
    trademark and the Infringing Mark, the Infringing Website causes consumer
    confusion. On behalf of ****, we demand that Domains by Proxy terminate all
    access to the Infringing Website and disclose the identity of the private registrant to
    us within one week of receiving this letter.
    **** MARK
    ***** is the preeminent source of dietary and nutritional supplements, and has
    spent significant amounts of money promoting its products. Advertisements for
    **** products appear prominently in widely read fitness magazines and on
    heavily trafficked websites. **** owns the exclusive rights, title, and interest in
    and to the federally registered trademark **** (U.S. Reg. No. 2****)(the &#8220;Mark&#8221;).
    The Mark is registered and used for dietary and nutritional supplements. For years,
    whenever consumers have seen the Mark on nutritional supplements, they have
    recognized the Mark as an indicator of the high quality they have come to expect
    from ****. The U.S. Patent and Trademark Office has recognized ***
    strong rights in the ***** Mark by placing it on its Principal Register. The Mark has
    been in use for over five consecutive years, and has become incontestable pursuant
    to 15 U.S.C. § 1065. *** is the only party entitled to use or authorize use of its
    Mark and has not authorized Domains by Proxy, or any third party, to do so.


    The Infringing Mark is nearly identical to **** *** Mark. Both the Infringing
    Mark and **** Mark are used for nutritional supplements. Accordingly, the
    Infringing Mark is likely to, and does, cause confusion as to the source and quality of
    the goods **** offers.
    The use of the Infringing Mark constitutes direct and contributory trademark
    infringement under the United States Lanham Act (United States Code, Title 15,
    Section 1051, et seq.), as well as state trademark and unfair competition laws, and
    Domains by Proxy is liable to our client as a result. On **** behalf, we demand
    that Domains by Proxy terminate all use of the Infringing Mark immediately.
    FEDERAL AND STATE TRADEMARK INFRINGEMENT
    The Lanham Act, at 15 United States Code §§ 1114-1125, prohibits the unauthorized
    commercial use of a registered mark in connection with the sale, distribution, or
    advertising of any goods if such use is likely to cause confusion among consumers as
    to affiliation, connection, or approval by the owner of the mark. The Lanham Act
    provides for an injunction against the infringer, as well as substantial damages
    against a party using a registered mark without permission, including (1) recovery of
    the infringer&#8217;s profits, (2) recovery of loss to the trademark owner, and (3) an award
    of attorneys&#8217; fees and costs of suit. Additionally, the court may increase those
    damages by three times their actual amount in cases where there is evidence of
    intentional infringement. In this case, there clearly is such evidence, since the
    Infringing Mark is specifically designed to emulate **** federally registered ***
    trademark.
    The use of the Infringing Mark would lead a reasonable consumer to believe that
    **** endorses, sells, or is otherwise connected to the products bearing the
    Infringing Mark. As a result, potential customers seeking **** products are
    diverting their business to the registrant of the Infringing Website. The registrant is
    thereby taking sales away from ****.
    The registrant&#8217;s use of the Infringing Mark causes consumer confusion as to the
    origin, approval, sponsorship, and affiliation of the products sold on the Infringing
    Website. And since Domains by Proxy knows the registrant is engaging in trademark
    infringement, Domains by Proxy is contributing to the trademark infringement and
    shares liability for any harm done as a result of the registrant&#8217;s deceit. Accordingly,
    Domains by Proxy has committed numerous acts of contributory trademark
    infringement.
    DEMAND
    Under the circumstances,**** hereby demands that Domains by Proxy:
    1. Immediately terminate all use of the Infringing Mark on the Infringing
    Website; and
    2. Disclose the identity of the private registrant of the Infringing Website,
    as well as all contact information Domains by Proxy has for the private registrant.
    **** expects that Domains by Proxy will comply will these demands by Monday,
    October 3, 2011. In the event Domains by Proxy does not meet this
    deadline, **** may pursue its legal remedies against Domains by Proxy for
    federal and state trademark infringement, unfair competition, and other common law
    rights.
    This letter is not intended to be a complete statement of **** position as to the
    facts or law relating to this matter, and nothing contained in or omitted from this
    letter is intended to be, nor should it be construed as being, a waiver by **** of
    any of its rights, claims, remedies, or causes of action. To the contrary, all such
    rights, remedies, positions of fact and law, and causes of action, whether at law or in
    equity, are expressly reserved and shall be vigorously pursued."
     
  2. Taktical

    Taktical Elite Member

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    Depends on intent. If its obvious that your product name is designed to fool consumers into thinking they are purchasing the other...it could be trademark infringement.
     
  3. Scripteen

    Scripteen Elite Member

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    Both serving the same purpose? If yes then it might be like selling "Adibas" as "Adidas" while both are shoes.
     
  4. syek1

    syek1 Regular Member

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    i wasnt copying their name at all though.

    the product is marketed as a "steroid alternative"

    so example a steroid name is "winstrol" and everyone calls it "winn" for short

    so i decided to name my product winn-x. just like the other company named theris w-inn to make it sound like the steroid. i was in no way copying this company
     
  5. Roparadise

    Roparadise BANNED BANNED

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    Get nameoflawfirmsucks.com and seo it to #1 spot for the keyword of his law firm,and say youll take it down if they do not further any legal action.
     
    • Thanks Thanks x 1
  6. syek1

    syek1 Regular Member

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    lol nice idea but i dont think that will work in my favour
     
  7. dowser

    dowser Power Member

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    If the Domains by proxy gave you the letter to do what you like with it - it means they don't care too much, I guess they would need a court decision to b forced to disclose your identity. After all that's why you used them :D

    Lots of these companies will try to scare you but won't do much more. You would have to cost them a lot in lost revenue (and I believe they would have to prove it!) in order to pursue it any further. But I'd definitely check with your lawyer. Only you know all the details.
     
  8. SilverSultan

    SilverSultan Regular Member

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    Where you think ? xD
    well I am not sure if South Africa has a extradition laws with US, if not then fuck it, and keep it up, heck move to Zimbabwe lol maybe build a hut near the border region with South Africa and Zimbabewe with internet connection, LOL US can't touch you then,

    On A serious note I am not sure if you by intent made your site similer or not or if it is similer and they are bullshiting, again I would move everything to a annoymous offshore hosting, use Proxy's, cloaking, connect to your internet browser in private, and ALWAYS CLEAN YOUR HISTORY, :) :nemoflow:
     
  9. PhillyLuke

    PhillyLuke Junior Member

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    Hahah I'm all too familiar with this:

    I work for a law firm and one of our competitors had that same situation happen to them.

    The law firm sued the guy that made the "sucks" website and it got him to take it down. It got a ton of press and AWESOME backlinks which I'm still having trouble beating out.

    Story below

    http://www.lawmarketingmonitorDOTcom/law-firm-internet-marketing/your-firm-sucks/

    My boss and I even half jokingly discussed started our own "lawfirmsucks.com" site about ourselves and hopefully snagging some killer backlinks...

    But alas we decided not to go that route...
     
  10. gu3sswh0

    gu3sswh0 Regular Member

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    I would see what your lawyer has to say, but ultimately it is unlikely the firm has any jurisdiction in south Africa and it is just threats.

    As I say though, get an answer from a lawyer, which I am most definately not.
     
  11. losille

    losille Junior Member

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    Ok this is what I learned during a copyright infringement a long the way.

    1. Copyright in the USA doesn't apply in other countries. If hey have no copyright in the country where the business is run, they are bullying you. The record label I worked for had to have a copyright for a song in each country.
    2. A simple statement on your website saying you are not associated with their product may help.
    3. When Wendy's started using "Super Salad" a term used by our restaurant for years and copyrighted by us, it was simple. Wendy's said you can take the small settlement and let us have "Super Salad" or we can tie you up in court. We have staff lawyers and we can tie up in court until you are broke. Wendy's got "Super Salad".
    So if they do have a legal claim on your location and appear to be big enough to sue you, give up and change the name.
     
  12. syek1

    syek1 Regular Member

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    thanks everyone for your input,

    i think they might be trying to scare me into handing over my domain to them because i am currently position 1 on page 2 for a keyword that gets searched about 5000 times a day and they are one like page 5 lol and have been trying to rank for the keyword for years.

    i might be wrong but i have a hunch that they want my domain

    anyway i am going to see a lawyer first thing monday, if i have to change my product name then so be it

    other than this problem i am dam exited about ranking on top 5 on page 1 for this keyword, i wanna make some good $$$
     
  13. syek1

    syek1 Regular Member

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    i dont know much about this stuff but i just visited http://trade.mar.cx/ and found the exact details for this trademark and under status it says " Registration cancelled because registrant did not file an acceptable declaration under Section 8." i hope that means their trademark was canceled
     
  14. Roparadise

    Roparadise BANNED BANNED

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    That's why you use black hat techniques against the law firm and the company. Read the CIA book of dirty tricks and it will give you alot of ideas.
     
  15. Water damage

    Water damage Junior Member

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    lol - tell them you'll sell them a backlink for half-price if they leave you alone, but they must sign a 5 year contract and pay for the link upfront. Then tell them helmets are for chicks and bokbevok!


     
  16. Jonny Quick

    Jonny Quick BANNED BANNED

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    They are attempting to shake you down. They've probably sent the exact same letter to every website on the planet that even remotely resembles the site they claim to own.

    Post their whois information and let some of the BHW detectives have a crack at it.
     
  17. nodup

    nodup Registered Member

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    i really dont see anything wrong with what you are doing, i say screw them and they are just jelous that you are doing a better job then them, and they just want your product and the profit it will bring with it.