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Elizabeth Prentice
Elizabeth Prentice, Attorney
Category: Business Law
Satisfied Customers: 170
Experience:  Legal counsel for multitude of businesses; Business Law Professor; Experience as In-House Counsel
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Hi there, A business associate of ours started a business

Resolved Question:

Hi there,

A business associate of ours started a business in D.C. called "LEED CE Academy". The online business sells partner courses on green buildings, LEED exam prep, etc. The business is legally registered in D.C. and has an IRS EIN. Here is the problem.

Recently they got an email from USGBC saying "your company name “LEED CE Academy,” your company logo, and your domain http://www.leedceacademy.com contain the LEED mark, which is a registered trademark of U.S. Green Building Council (USGBC). Our trademark policy states that companies may not use any USGBC trademarks as part of a company’s name, logo, domain name, or brand name for a product or service as it may imply endorsement by or affiliation with USGBC. We appreciate your enthusiasm for green building education, but we must demand that you immediately remove the LEED trademark from the name of your company name, domain, and logo."

Now, our business associate did their research before starting this online business. There are tons of products, courses, domains and services that use the "LEED" trademark and many of them do it without integrity. A few examples include (leed.com, usgbc.com, leedce.com, leedexamprep.com, leeduser.com, etc.)

The business's goal is not to hurt any organization including USGBC and in fact this site promotes them. They have included a disclaimer that the site is not owned by USGBC.

Our busienss associate wants to respond to this email of theirs so that this problem is solved.

We look forward to your valuable suggestions
Submitted: 6 months ago.
Category: Business Law
Expert:  Elizabeth Prentice replied 6 months ago.
I am an attorney and I would be happy to assist you. First, if a business wishes to enforce its intellectual property rights, they have full protection and ability to do so. It sounds as if the person you should be upset with is your business associate, for not doing a very good intellectual property search. You should not compare yourself to any other company. If the company wants to go after those other companies, that is their prerogative and not yours to dictate. So let's keep the focus on your company.
First, they properly noticed you before filing a lawsuit regarding your alleged infringement of their marks. I would recommend you cease using any of their trademarks immediately, and inform them that you plan to cease using them immediately. If there is any doubt that they properly own the marks, then you should request evidence that you are in fact infringing on their marks. It appears that they will allow companies to use their marks, upon written request sent to them directly. This may have been the step your business associate failed to complete, which may be why they are so upset. I recommend you request permission to use their marks, before continuing your business with them any further. You can find information about requesting their use here: http://www.usgbc.org/trademarks

trademark infringement carries with it a statutory penalty of "(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just." See, 11 USC 1117
Therefore, you should not take their "take-down notice" lightly.
I hope my answer has assisted you and that you will leave me a positive rating!
Customer: replied 6 months ago.


Hello Elizabeth,


 


Thank you for your advice. I agree that our business associate should have done their research but when you see so many other busiensses doing it, you will think that it's ok as long as your intention is not to seel what they offer. If you search the word "LEED", you will see atleast 1000 people using it for services and products. So what happens to them?


 


As an individual with my experience with an organization like USGBC, I feel like they selectively pick on folks. If there is a law, it should be applicable to everyone not to a select group of folks. Our business associate is willing to take all the actions they reccomend provided, they do the same with everyone equally. Plus, the new business was registered with D.C. same state where USGBC is incorporated...so the buss. associate assumed that the state of D.C would not have allowed the business registration.


 


It is easy to blame a person for not paying attention such as when someone gets into an auto accident, or any other offence. The purpose here is to make sure they are not being taken advantage of.


 


 

Expert:  Elizabeth Prentice replied 6 months ago.
Unfortunately for you intellectual property law and business law doesn't work that way. I recommend you consult with a local attorney if you are sued for failing to comply with their trademark takedown request. Good luck!
Elizabeth Prentice, Attorney
Category: Business Law
Satisfied Customers: 170
Experience: Legal counsel for multitude of businesses; Business Law Professor; Experience as In-House Counsel
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