

Trademark lawyer to 3-man startup: hand over your domain–or else - erikdykema

Erik @ CaseRails https:&#x2F;&#x2F;caserails.com here.<p>Our legal document automation startup is being threatened by a trademark attorney who claims that he owns any legal software name with &quot;Case&quot; in it:<p>http:&#x2F;&#x2F;arstechnica.com&#x2F;tech-policy&#x2F;2015&#x2F;05&#x2F;trademark-lawyer-to-3-man-startup-hand-over-your-domain-or-else&#x2F;
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namecast
Hi Erik!

I imagine you're going to be flooded with advice to grab a lawyer right quick,
and that it's just smarter to change your domain name immediately. I'll offer
a dissenting opinion, after having dealt with one too many wannabe copyright
troll lawyers myself. Here's my response to the last barrister who tried
something similar with a domain I own:

> Robert, > > We believe the statement on our page specifically disclaiming
> any > authorization by or affiliation with
> [http://your.site](http://your.site) is more than enough > to prevent any
> possible confusion between [http://your.site](http://your.site) and our
> product. > > From Graham Webb Intl v Emporium Drug Mart, 916 F.Supp. 909
> (E.D. Ark > 1995): > > "The Court likewise rejects Graham Webb's argument
> that the warnings Drug > Emporium has posted disclaiming any affiliation
> with or authorization by > Graham Webb are ineffective and not a question
> properly resolved by > summary judgment. While it is true that the
> effectiveness of a > disclaimer in a Lanham Act case may generally be a
> question of fact, see > Home Box Office, Inc. v. Showtime/Movie Channel,
> Inc., 832 F.2d 1311, > 1315 (2nd Cir.1987), a disclaimer expressly declaring
> that the seller is > "not affiliated" with the owner of the trademark or is
> "not an > authorized distributor" of the trademark owner's products has been
> held > to be an effective means of preventing confusion in the minds of >
> consumers as to affiliation with the owner of the trademark. Matrix >
> Essentials, 756 F.Supp. at 282. As in Matrix Essentials, the only >
> reasonable conclusion in this case is that Drug Emporium's warnings to >
> consumers disclaiming any affiliation with or authorization by Graham > Webb
> effectively prevents likelihood of confusion in the minds of > consumers as
> to sponsorship or affiliation." > ". > > Please view the amended site and
> let us know if you disagree.

Long story short: read up on the Lanham Act and _all_ it's particulars, talk
to a lawyer if you have one on retainer (a trial attorney is expensive, but
legal aid and advice is relatively speaking much cheaper), and most
importantly, don't freak out - this guy's claim is so vague that he doesn't
have a chance of shutting you down (note: IANAL and also not your lawyer, this
is just my opinion - but I've had two separate side projects shaken down by
wannabe copyright trolls, and I can at least confirm that my approach has
worked for me in the past and stopped any potential legal action in it's
tracks.)

Somewhere on your main page, perhaps in the footer, specify that you have
absolutely no affiliation with his product. Notify him that you've updated
your site to clear up any potential confusion between your product and his,
and ask him if he can provide any proof of customers for Caseweb confusing
Caserails for his product, so that you and your counsel can further evaluate
his claims in hopes of reaching an amicable resolution. His response will be
illuminating, I'm sure.

Good luck.

~~~
erikdykema
Thanks @namecast , we appreciate the support!

