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Roger
Roger, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 26350
Experience:  BV Rated by Martindale-Hubbell; SuperLawyer rating by West
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Trademark C&D letter

Customer Question

I got a C&D letter form a company claiming they have trademarked the name PokerStrategy.com so my website pokerstrategygeeks.com is in violation - Poker Strategy is a very common term, and this is just silly right?

It it will help, I'll post the C&D letter below -


Dear Mr. Layman,


 


Swerford Holdings Ltd. is a registered company in Gibraltar and operates the website http://www.pokerstrategy.com. We have noticed that you are the registered owner of the domain http://www.pokerstrategygeeks.com. This address is confusingly similar to the name of our product and the website http://www.pokerstrategy.com.


 


You do not have any rights in the name/product of PokerStrategy.com and no legitimate interest in respect of the domain name http://www.pokerstrategygeeks.com. Moreover, it seems that you might have registered the specific domain name in bad faith. PokerStrategy.com is a registered trademark in various countries including the United States of America. The trademark is protected by the Madrid System for the International Registration of Marks and its international registration number is(NNN) NNN-NNNN(for details visit http://www.wipo.int/romarin/newSearch.do). In this particular case the trademark protection covers following activities:


 


a)      Advertising; compilation of advertisements for use on the Internet; compiling of data in computer databases; providing of on-line business and commercial information for the promotion of poker playing and poker information;


b)      Providing access to databases with sporting and gaming information and news; providing access to databases with information relating to gaming, in particular instructional material on the Internet or on computer networks; providing access to databases with information for arranging and conducting events in the fields of gaming, gaming competitions, recreation and entertainment, on the Internet or on computer networks; providing access to databases with electronic publications and with sporting and gaming information online that is downloadable from databases or the Internet;


c)       Publication of texts other than publicity texts, namely, of sport, competition and games instructions, educational materials and user instructions; educational services, namely, conducting classes, seminars, conferences, workshops in the field of poker playing; providing of training in the field of poker playing


 


Therefore, we ask you to desist from using the domain http://www.pokerstrategygeeks.com or to transfer the domain to Swerford Holdings Ltd. until 29 February 2012. Otherwise we will be forced to file a complaint to the World Intellectual Property Organization for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy.


 


Please respond to this letter until 29 February 2012 and send your response to notice@pokerstrategy.com. If we do not hear anything from you until that date, your decline regarding our demand will be assumed.


 


We appreciate your cooperation in this matter.


 

Submitted: 2 years ago.
Category: Intellectual Property Law
Expert:  Roger replied 2 years ago.
Hi - my name is XXXXX XXXXX I'm an Intellectual Property litigation attorney here to assist you.


Trademark infringement mainly depends on (1) who used the name for commercial purposes first, and (2) which goods or services were sold using that name. As a general rule, if they began using the name after you began using the name, you have superior trademark rights - even if you don't have a registered mark.

Also, bear in mind that infringement is based on the likelihood of customer confusion. If you sell the same products, it is possible that there could be someone who intended to go to the over site and got confused because of the similar name.
Customer: replied 2 years ago.
Sorry not sure if my follow up question went through properly.

So I want to be clear because your answer didn't specifically answer my question.

Poker Strategy is a very common phrase in our industry, and not directly associated with their company. As Poker Strategy just means Poker Tips, and is very very generic.

Our site doesn't not look like their, nor do we offer the same services, or in any way try and represent our site as theirs.

We provide free resoucres to oour members and visitors, and our revenue model is based on partnerships with various gaming companies/casinos. Their model is a paid membership model and by no means can they corner the market on general poker advice or tips.

So again, my question is how can a very generic terms like this be trademarked?

To me it would be like you being able to trademark "Legal advice" or "Legal Strategies" and trying to sue people who claimed they also gave legal advice or strategies.

See what I mean?
Customer: replied 2 years ago.
Relist: Other.
The specifics of my question was not addresses. I can look up general answers. I would like a more specific opinion as it pertains to my question.
Expert:  Roger replied 2 years ago.

The answer was not extremely specific because I wanted you to know the general rules that apply to any given trademark infringement issue.

 

In your case, the phrase "poker strategy" is certainly a generic term, and I agree with you in that regard. The main problem is to determine whether a person/consumer/customer would confuse your site for the other site. Based on what you've told me, the sites are totally different and offer different services - one for a fee and one for free. Thus, I think you have a valid argument that the sites are not confusing to a consumer.

 

I obviously can't tell you how a legal battle may turn out as that requires knowing all of the facts of the matter as well as what is in the mind of jurors. However, I think you have a defensible position. I would recommend that you have a local attorney respond to the letter and lay out your position that there is no overt or obvious chance of confusion by consumers as to the site they intended to reach.

Roger, Lawyer
Satisfied Customers: 26350
Experience: BV Rated by Martindale-Hubbell; SuperLawyer rating by West
Roger and 3 other Intellectual Property Law Specialists are ready to help you
Customer: replied 2 years ago.
Ok gotcha, and thank you very much Kirk!
Expert:  Roger replied 2 years ago.
Sure. Sorry for the delay in responding. I lost my internet connection temporarily.
Customer: replied 2 years ago.
No problem Kirk, thanks again.


Thanks

Randy
Expert:  Roger replied 2 years ago.
Glad to help. Please let me know if you have additional questions.

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