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Trademark Police Can Be School Yard Bullies–Like Amazon!
© Cheryl Hodgson 2008 | Posted on August 4, 2008
A number of years ago, our client registered and used the domain <amazonnetworks.com>. He launched a website and used “Amazon Networks” continuously for his computer networking services.His first web page at this URL pictured the Amazon River.The association of the Amazon River was to denote his business as a powerful force to be reckoned with. His use was “arbitrary,” i.e., he applied a common term arbitrarily to unrelated goods or services. Read:APPLE is a great example of Arbitrary Use.
Unknown to our client at the time he launched his business, another start up was thinking of the same metaphor of the word “Amazon.”By coincidence, AMAZON launched its site selling books, and eventually music, completely unrelated to our client’s rights for computer services.Years later, our client received a “cease and desist” letter from Amazon, claiming he was infringing Amazon’s rights.
Unfortunately, our client committed brand “SIN.”He missed the mark when he failed to obtain a federal trademark for use of AMAZON for computer services. Even without a registration he was legally entitled to claim “common law rights” and good faith in his adoption and use. Sadly, without a prior existing trademark registration, our client was in the position of needing to climb the legal equivalent of Mt. Everest wearing flip flops with no tent to protect him from the elements.
Amazon’s high priced lawyers could have cared less about our client’s good faith and prior rights.After months of good faith negotiations, Amazon launched a federal lawsuit in U.S. District Court, claiming our client was a thief, had stolen their domain, and was deliberately trying to trade on their good will.One could argue that Amazon and its lawyers had convinced themselves they had invented the Amazon.What a crock!
The papers were several inches thick.Our client was buried alive under an avalanche containing misleading accusations against him.The subtext of their lawsuit was “We are bigger than you, we don’t care about your business or your life, we’re going to make you give it to us, or else.”
Was my client innocent and wrongly accused?Completely!Could he afford to defend himself?No! Amazon made effective use of the “bully pulpit.” Why not, if you can get away with it?That’s the attitude of some trademark owners when it comes to enforcement.
To "SIN" is a Greek term, still in use in archery, which means "to miss the mark."By failing to register his domain as a trademark when he first began his business, our client literally and figuratively “missed the mark.”Had he obtained a registration early on, his rights to exclusive use of AMAZON in the computer field would have been established nationwide.Further, his use would have been documented before the Trademark Office at or about the same time Amazon the bookstore started in business.A registration would have helped reveal their allegations years later to be nothing more than the intimidation of a school yard bully. He would have carved out his "brand space."
Don’t let this happen to you.Learn a valuable lesson from our client’s plight.If you adopt and use a term in good faith, protect it.It’s cheap insurance.You’ll never know when you need to climb a mountain.Good hiking boots come in handy and protect you on the way.
Technorati Tags: AMAZON, Apple, bully pulpit, domain names, Intellectual Property, trademark infringement, trademark registration
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