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Ask Law Educator, Esq. Your Own Question
Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 118703
Experience:  Attorney practicing all aspects of copyright/trademark law
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May be you can, 5600192.1 Christina M. Licursi direct

Customer Question

may be you can
JA: What written documentation do you have?
Customer:(###) ###-####1
Christina M. Licursi***@******.***
direct dial(###) ###-####Ryan M. Van Olst***@******.***
direct dial(###) ###-####August 1, 2017
VIA E-MAIL to***@******.***
WGS Ref. No.: Y0115.40068DN00
Dear Sirs:
We represent Yale University (“Yale”) with respect to trademark matters. As you are no doubt
aware, Yale is a famous university that is renowned worldwide. Our client owns trademarks for YALE
and various YALE-formative marks, and has registered these marks with the U.S. Patent and Trademark
Office and around the world. Yale vigorously enforces its trademarks and unauthorized use of the YALE
mark and name is ***** *****
Our client recently became aware of your use of, which
incorporates Yale’s famous YALE mark as the initial, dominant portion of the domain name, followed by
the generic wording “technologies” for your technology training and consulting services. Your website
also prominently features the YALE mark in the title portion of your homepage, in your logo, and
throughout your website, as shown below:
Screenshot from
Yale Technologies
August 1, 2017
Page 2(###) ###-####1
Your use of the YALE mark for educational and consulting services will lead consumers seeing
your website to be confused, believing that it is a Yale-run website, or that your website is otherwise
associated with or authorized by our client, when in fact it is not. This is of particular concern to our client
in light of our client’s prior rights and registrations for YALE for its core educational services.
Accordingly, your use of the YALE mark for these services constitutes trademark infringement and unfair
use of our client’s intellectual property rights. Your actions are also a violation of ICANN’s Uniform
Dispute Resolution Policy, which you agreed to when you registered the domain name.
In addition, your unauthorized use of Yale’s trademark appears to be a bad faith attempt to
confuse consumers and profit from Yale’s reputation, and we see no legitimate purpose for your use and
registration of this domain name. If our client is forced to take legal action, it will seek all available
remedies, including disgorgement of your profits, our client’s actual damages, and attorney’s fees.
In view of the above, we demand that you immediately shut down and transfer the domain name to our client. You must also agree in writing to cease all present and future
use of the YALE mark. If you comply with the foregoing, we will be in a position to consider complete
resolution of this matter. Due to the importance of this matter, we look forward to receiving your response
by August 15, 2017.
Very truly yours,***** & SACKS, P.C.
Christina M. Licursi
Ryan M. Van Olst
JA: Have you talked to a local attorney? Has anything been filed in court?
Customer: no
JA: Anything else you want the lawyer to know before I connect you?
Customer: no
Submitted: 2 months ago.
Category: Intellectual Property Law
Expert:  Law Educator, Esq. replied 2 months ago.

Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.

Expert:  Law Educator, Esq. replied 2 months ago.

What is your question for us about this issue?

Are you using their trademark incorporated into your name (derivative use)?

Customer: replied 2 months ago.
The name of my website is and we offer courses in Information Security courses and Consulting. They are saying I am using the name YALE in bad faith as though i am affliliated with them or pretending to be endorsed by YALE University. I have no connection with Yale University . My logo says Yale Technologies , nothing similar to yale university logo
Expert:  Law Educator, Esq. replied 2 months ago.
Thank you for your reply.
While I understand your point, under the Landham Act the Act states that if your mark or use of the term would create a likelihood of confusion in the same trade or industry (education, in this case) then your use would be prohibited. While you say you have no connection, use of the term where the school has built up a reputation in the education realm such as Yale University has can be deemed to be sucking from their goodwill and can confuse the general consumer looking for Yale University. So, the arguments made by the University are valid legal claims under the Landham Act.
You have a right to dispute their claims and prove that you are so removed from the type of service they provide that you could not cause confusion and that you are not playing off of their goodwill and if you do so, you could get the rights to use the name, but this means hiring a local intellectual property attorney and going to court against the university and presenting evidence that there is no likelihood the reasonable consumer will be confused by your name and association with the university and that you are not playing off of the goodwill the school has built in their trademark.
At this point, you will need to respond, as you cannot ignore them because if you do they will proceed to court to protect their trademark. So you have no real choices here other than stop using the name or use a local intellectual property attorney and seek to fight them for the right to continue using the name. Those are the only two realistic choices you have.
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