Thursday, June 4, 2009

Blog Name 'Stolen' By Website

Dear Rich: I registered a blog on Blogger in January, 2009, and at the bottom of the blog was a trademark notice as well as a copyright notice repeating the blog's name and stating "all rights reserved". The blog links to our website, which sells coastal- and beach-themed decor and similar items. It was our intent to make the blog a website of its own. Our first posting was on February 14, 2009. I recently learned a company registered the exact title of my blog with a extension on February 9, 2009 and it states "beach-inspired decor, lounging, and accessories" The site did not exist at the time I registered the blog or did a trademark search on TESS. Their site has no mention of a trademark or any copyrights. Since I claimed trademark for the name as well as copyright notice on my blog, I am wondering if I can send a cease and desist letter. I'm so glad you asked. The short answer is "maybe you should send a letter... or maybe not." We're sorry to hear about the misadventures of the competing website. However, the Dear Rich staff must point out that adding a trademark notice -- for example, the letters 'TM' -- doesn't mean much except that you think you have trademark rights (unlike a federally registered mark, which entitles you to use the 'R' in a circle). Starting a blog at a blogging website like Blogger also does not guarantee you rights; it merely reflects that you started a blog. (Note also that the date of the postings can be changed in blog software, so that fact by itself is not conclusive as to rights.)  
What really matters? You may have a superior legal position if you can demonstrate that you are the first user of the mark in connection with the sale of these goods (or with retail web services). You will probably have a harder time winning that battle if your mark describes some aspect or quality of the goods. In general, the most important date is the date when trade (the sale of beach products) was first conducted using the blog name or mark. (As they say in the IP biz, "no trade; no mark.") If you feel you have acquired trademark rights (or if you have a bona fide intent to use the mark) you can file with the USPTO and proceed against the other site on the basis of your federal rights. But please review your situation before filing, as the USPTO fees are not refundable. For more help, you can find Nolo's downloadable Guide to Trademark Applications on this web page