Trademark Infringement - C & D Letter Received

[pickle22]

Received a letter today regarding a domain I registered a few months ago...

Here's what the letter said:

We represent XYZ Co., the owner of the common-law trademark, "4 generic words". XYZ Co uses this mark in the United States in conjunction with property it's "--------------------------" services. This mark has been used continuously for more than a decade.

Our client has recently discovered that "Pickle22" registered the www domain name "4genericwords.com"and is operating a commercial website which infringes upon our client's common-law trademark rights, constitutes false designation of origin and is in violation of the Anticybersquatting Consumer Protection Act of 1999, which embodied in the Lanham Act. Furthermore, "Pickle22" is trading on the good will of our client by using a domain name that is confusingly similar to "4 generic words".

On behalf of our client, we hereby demand that you immediately cease and desist from operating the infringing website and remove the same form public access, and provide us with written confirmation that you have done so within twenty four (24) hours from your receipt of this letter.

Please note, this letter does not constitute an exhaustive statement of our client's legal position, nor is it a waiver of any of our rights and/or remedies in this or any other matter, all of which are expressly reserved. Your immediate attention to this matter is expected and appreciated.

The site is a regional site that went live a couple of months ago. Hasn't made a dime yet.

The USPTO site doesn't have a registered or pending mark for the "4 generic words"...

I searched for the company name "XYZ Co." and couldn't find anything on the web about the company or about the phrase they're claiming to have common-law trademark ownership over...

Any suggestions as to how I should proceed here?

Thanks in advance.

[Acro]

Looks like another instance of this incident!

[DNQuest.com]

Did you search Google with the 4 generic words? What came up. Did you lookup the lawyers who sent the letter? To me it seems like a lawyer wrote it. TMs do not have to be registered.

[pickle22]

Originally Posted by DNQuest.com

Did you search Google with the 4 generic words? What came up. Did you lookup the lawyers who sent the letter? To me it seems like a lawyer wrote it. TMs do not have to be registered.

Yes I did a search for the generic words and nothing came up for them. The generic term is "Long Island Tax Reductions"

I looked up the lawyers that sent the letter and they dont' appear to have a website but I did find their name on the internet in some lawyer directories and a few cases that had their name attached to it.

Yeah, I'm aware that TM's don't have to be registered and I'm really just confused as to whether they can claim a mark that I don't see on any sites on the net...

[onlinetv]

The law is fiction. It does not have to be true; it can be a lie, a fiction, and a fake. Law does not really deal well in reality that is why it is a fiction. The truth is they can do what they like.

In real world terms they are pulling up to the table and calling your bluff. Put up or get out of the game sort of. They claim a hand that you see is of no value. Law does not care; it will accept the suit because the law wins no matter what. Like when you go into a casino - the house wins no matter what. Now you will be faced with the business choice. How much are you willing to spend to keep what you have or give it up to them.

Been there, done that and got the lessons. Law is a fiction. Do not be swayed with logic when dealing with fictions. Filing is about 300 bucks or less. Do you know how much your answer will cost you (due 20 days from their notification of filing?)?

I hope they are not true jerks, but it is not unusual and is in fact business practice taught at the best schools.

That is a great domain for that niche. I see no way you could get any trademark except a design treatment and would have to declare you are not claiming mark on the words. It is worth saving. Put your value on it and fight for it or take money for a sale.

I am not a lawyer; this is not advice of consul. That said I would tell you to call up and talk to the Patent and Trademark office. They have always been helpful to me and are there to serve you. You could easily ask if you can trademark those words and I think it is so laughable they would answer without you having to file to find out.

You can file and get rejected - I am positive. You can file a graphic and ask for that as a mark and get it - but the words can still be used anywhere even in your line as long as it is not that graphic. So.

Remember, ANYONE can file a suit even if 100 percent wrong. The most idiotic reason will validate a fraudulent filing so no one pays legal fees. It becomes a tool of manipulation by agents of the court (lawyers) and those they attorney for.