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Old 02-17-2005   #1
SeattlePaul
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Unhappy Little Guy Sued Over Generic Name Use

I own a small "mom and pop" company in Seattle. I do home loans, my wife is the real estate agent who sells the homes. When we started our company two years ago, I went to Overture to see what the top terms were. The top terms were variations on the term "seattle mortgage".

I acquired the domain name "seattle-mortgage-loans.com". With the help of many kind SEO experts here at SearchEngineWatch, I have improved my Google ranking to a PR6 and rank highly for terms such as "seattle mortgage", "seattle mortgage company" "seattle mortgage broker", etc. Our website is where we get most of our business.

I just got a "cease and desist" letter from an attorney representing a large company called Seattle Mortgage. They want me to stop using my domain name and stop using the term "seattle mortgage" in any of my advertising.

Here's what they said. "On behalf of Seattle Mortgage, we demand that you cease and desist from using any mark or company name conaining the words "Seattle" and "mortgage" as its domain name or in any other form that is likely to mislead the public."

Does anyone have any information on how enforceable demands like this are? Can a company really trademark generic names? Where is the case law? What kind of attorney, if any, does a person use for this type of case?
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Old 02-17-2005   #2
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Any idea if they are going after every mortgage company in seattle that happen to be using 'seattle mortgage' on their site?

Have you tried contacting the United States Patent and Trademark Office and seeing what they have to say on the matter?

Last edited by Gerardism : 02-17-2005 at 08:38 PM.
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Old 02-17-2005   #3
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Quote:
Originally Posted by Gerardism
Any idea if they are going after every mortgage company in seattle that happen to be using 'seattle mortgage' on their site?
After posting the thread, I went online and investigated other domain names that were close to mine. Almost all of them were owned by a web hosting company in Portland. This company had nothing to do with mortgages. The law firm that sent the letter is headquartered in Seattle. The letter came from their Portland branch. My guess is they are as upset with them as me. I can't imagine they would try to take on every mortgage company in the Seattle area.

Quote:
Originally Posted by Gerardism
Have you tried contacting the United States Patent and Trademark Office and seeing what they have to say on the matter?
I found different legal websites speaking to the topic. The law is murky. Their are clear cut cases where domain name owners use the public's association with famous people or companies to divert profit from the rightful owners. In this case, their claim is that the public associates the generic term "seattle mortgage" with their specific company. That would be like getting a letter from the New York Hotel saying someone could not use either the term "new york" or "hotel" in a domain name or website.

The attorney I spoke to pointed out the real problem. If the large company chooses to sue, I'm afraid I'll be buried in legal costs. He says I might offer to sell them the domain name. They would probably demand I also cease and desist from saying what I do (mortgage loan broker in seattle) on any other website I build. The attorney is going to write a letter. The fact that they are wrong seems to offer no protection at all. What may end up mattering in the end is they have more money for lawyers than I do.
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Old 02-17-2005   #4
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I'm no attorney

Hi,

I'm no attorney but I think you are protected here. The attorney may just be trying to scare you. I particularly find separating the words "Seattle" and "mortagage" troubling. You can't trademark "Seattle" or "mortgage". I think the trademark "Seattle Mortgage" is dubious too.

The Trademark law is there to protect against consumer confusion if someone were to confuse your company with the "Seattle Mortgage" company and since you are both located in Seattle, I think this is where their attorney is coming from. However, when it comes to owning domain space, the terms are too generic to worry about.

Also, if you advertise for the term "seattle mortgage" in the search engines you have the Geico case precedent on your side. Of course it went in a different direction in France, but Seattle is US. I wouldn't worry about your positioning for the terms.

The attorney only has one thing in his favor, you are both located in the Seattle area and consumers might get the businesses confused. But I do not think that means they can force you to quit operating your domain space because it includes the words seattle and mortgage. That area is still pretty gray and I've seen it takes one helluva fight to get someone to quit a domain space. I think it took Sting years and a lot of money to get sting.com away from someone else and these cases are rarely won. The government does not own whitehouse.com!

Of course, for real legal help, please seek a bona fide attorney's advice.

Hope this helps!

-detlev
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Old 02-17-2005   #5
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Follow up

I just saw your post before mine.

Well, you may have to follow your attorney's advice because I'm not one. I find that the advice given is centered around the real world where you can be on the right side of the law and still lose because the opponent can out-spend you.

Totally unfair. I hope it somehow turns around for you.

Good luck!

-detlev
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Old 02-17-2005   #6
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Evening News?

Thanks, Detlev. I appreciate the posts. You are exactly right. Their attorney is advocating that whenever someone types "seattle mortgage" into a search engine, they are looking for that company. You and I both know that the name "seattle-mortgage-loans.com" is a product, and it should in no way confuse someone who is looking for a company named "Seattle Mortgage". If a prospective borrower just types in "seattle mortgage" for a search term, most people will be looking for the service, not the company.

Does anyone know more specific case law my attorney could refer to? Our attorney protects my wife's real estate company from trademark infringement, but doesn't know internet individual cases. It would help to be citing real domain name lawsuits that have been settled in favor of the domain holder against companies with generic names. (The New York Hotel, Canadian Furniture, California Winery.)

I wonder if I could interest the evening news in a David vs. Goliath story. THAT would level the playing field.
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Old 02-17-2005   #7
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You don't have to register a trademark in order to own it. I have had a fair number of discussions with intellectual property rights attorneys. Your domain name is probably in infringement. One of the best places for you to do research (and they used to have a forum where you could ask questions) would be http://www.gigalaw.com/. They have extensive article archives.

If it were me, I would give up the fight and switch to a true generic domain name like mortage-loans-in-seattle (which people are probably more likely to search for anyway -- I have found that people who search for local businesses specify "in whatever-town-they-want").

Do some research on keyword phrases before you pick a new domain name. Try to keep it short.
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Old 02-17-2005   #8
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gigalaw.com response

Michael, thank you for your posting, and your reference to www.gigalaw.com. It's a great resource. Article after article I read there indicated how difficult it is to enforce a generic trademark. One article used terms like "spring water" and "free checking". No matter how they are used, the public does not seem to associate them with any business and they are too general to qualify for tradmark protection. I don't believe my domain name, "seattle-mortgage-loans.com" is an infringement on their business. From what I am reading, Seattle Mortgage is an unenforcable trademark.

I appreciate your suggestion of my giving up thousands of dollars and the hundreds of hours I have devoted to promoting and building my website, and walking away from a corporate bully without a fight. However, I think I'll give it a shot.
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Old 02-17-2005   #9
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Quote:
Originally Posted by SeattlePaul
I appreciate your suggestion of my giving up thousands of dollars and the hundreds of hours I have devoted to promoting and building my website, and walking away from a corporate bully without a fight. However, I think I'll give it a shot.
I didn't suggest any such thing. I merely suggested you change domain names. I don't know if the term "seattle mortgage loans" or "seattle mortgage" is an enforceable trademark. I just wouldn't advise spending any money on a legal battle.

Sooner or later, someone will take the term I suggested. IF it follows the pattern that other, similar geographic terms (which I have researched) have followed, then you'll lose your traffic to a competitor anyway.

You may just want to cover your bases and grab the new domain name and put some unique content on it, even if you keep your primary content on the site you presently have.

Good luck.


P.S. -- Perhaps I should add that one of my own domains was, in fact, selected as an invitation to a cease-and-desist letter which never came. I was contacted by someone who had received a cease-and-desist letter about her domain name. She, like you, decided to stand her ground. She won, my domain and others were allowed to stand, and the "corporate bully" went bankrupt.

But that doesn't mean the little guys always win.

Last edited by Michael Martinez : 02-17-2005 at 11:09 PM.
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Old 02-17-2005   #10
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I didn't see anyone posting to the trademark on the uspto.gov site, so here it is:

http://tess2.uspto.gov/bin/showfield...ate=793ccu.2.1
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Old 02-17-2005   #11
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First off, here are some suggestions for things NOT to do

http://www.patents.com/dno.htm

There are simplified explanations at Chilling Effects Clearing House

http://www.chillingeffects.org/domain/

and the FAQ are particularly helpful. There's also a list of things that can be researched. It's primarily to save legal expense by doing the footwork on some research, but some interesting points are brought up

Documenting your Defense
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Old 02-18-2005   #12
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I would also think you could take all your work and do 301 redirects - if you stave them off long enough you could take all the content on the previous pages and put it on the new domain.
That way you don't lose the hard work.
You would also want to change any inbound links you have.
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Old 02-18-2005   #13
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Interesting post - I own a URL which directly corresponds to a major internet company, I happened to notice one day that they never registered it - big oversight on their part. I've had it for years, and used it to drive new customers to them, using an affilliate link, since on many search terms, my site ranked better than theirs. I made a fair chunk of money from them doing that, till they stopped doing the affilaite stuff.

About six months ago, I got a cease and desist from them. They demanded I close the web site, and that I not renew the URL - surprisinlgy they did not ask me to transfer the URL to them. I consulted with a lawyer friend who said I did not have much chance. ANyway I sent them a letter saying I was not defrauding anyone, that I clearly said on the site I was not them, and told them I was not going to co-operate and please get back to me. I've never heard anything since, but they must have been studying my SEO techniques because their site now gets to the top for the search terms I used to be #1 at, and my site does not rank at all for some things.

I also have a suspicion they talked to Google to get them to give my site specaial consideration.
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Old 02-18-2005   #14
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Quote:
Originally Posted by macdesign
I also have a suspicion they talked to Google to get them to give my site specaial consideration.
If your site is still ranking well for some terms, it doesn't sound like Google would have done anything about it.

Trademark infringement is a sticky issue, of course. You can almost be certain you'll lose if it is taken to ICANN, but I think they have occasionally ruled for the original domain name registrant.
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Old 02-18-2005   #15
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A while back - about 6 years ago - there was a case of Gateway suing Tucows. Some idiot lawyer at Gateway sent them a registered letter claiming they had basically trademarked spotted cows..

It hit CNN etc.. quite an embarrassing moment. Especially since Tucows had been using cows a lot longer than Gateway and threatened to countersue for infringement.

This quote from: http://www.chillingeffects.org/domain/

"Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit."

I would think that both seattle and mortage are generic.
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Old 02-18-2005   #16
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Common sense would suggest that the terms are too generic, but the law doesn't always run by common sense.

Simply put, when someone makes a legal approach via a legal representative, you simply have to seek professional legal advice on options for dealing with that.
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Old 02-18-2005   #17
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Great idea, Apology

Quote:
Originally Posted by Michael Martinez
I didn't suggest any such thing. I merely suggested you change domain names. I don't know if the term "seattle mortgage loans" or "seattle mortgage" is an enforceable trademark. I just wouldn't advise spending any money on a legal battle..
I apologize for getting emotional. It's just that I have spent so much time and money developing the website. So far, it's been the source of our livelihood. Investing money to protect what we've built feels very much like protecting my home against a bunch of rich people who claim my home is theirs. They may have more money to spend in court, but I strongly feel that what they are doing is wrong. It's a hard decision.


Quote:
Originally Posted by Michael Martinez
Sooner or later, someone will take the term I suggested. IF it follows the pattern that other, similar geographic terms (which I have researched) have followed, then you'll lose your traffic to a competitor anyway.

You may just want to cover your bases and grab the new domain name and put some unique content on it, even if you keep your primary content on the site you presently have..

Problem is, the stand their lawyers have taken in their "cease and desist" letter says I cannot use the words "seattle" and "mortgage" to promote ANY mortgage website. Granted, they may be softer on this than on my own domain. I'll have to think about this one. Good suggestion. I had not thought of it.
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Old 02-18-2005   #18
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If Seattle Mortgage had been using that name for 5 or more years, and the US Trademark office gave them that trademark, then apparently the trademark office believed it was not too generic. Which means they are allowed to request that (and most likely force) others in a similar business to stop using it, if it might be confusing to the consumer.

That's my understanding of the issue. It seems to me that the Trademark office is the one that had to first decide if something is too generic or not, before they give out the trademark. Once they decide it, then it's a done deal. (Or maybe others are allowed to appeal later? I really don't know.)
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Old 02-18-2005   #19
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Trademark was filed, I think?

Quote:
Originally Posted by Nacho
I didn't see anyone posting to the trademark on the uspto.gov site, so here it is:

http://tess2.uspto.gov/bin/showfield...ate=793ccu.2.1
This is why I love SearchEngineWatch. You guys are good. Nacho, I went to the site you sent me to. The session had expired, but it allowed me to do the search. Apparently, Seattle Mortgage has registered the trademark "Seattle Mortgage". I really don't know how to read the trademark registration. I have tried to attach the pages as text, but the forum system will not let me. (Says I exceed the quota by whatever file size it is, which is about 1K each.) It's simple enough to go to the Trademark Search page at http://tess2.uspto.gov/bin/gate.exe?...ate=5m3gp5.1.1 and type in "seattle mortgage". If anyone would take a look, I'd appreciate it.

The company that is suing has the same address as mentioned on the trademark report. The law firm that sent me the "cease and desist" is the same one mentioned in the report.
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Old 02-18-2005   #20
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Quote:
Originally Posted by Jill Whalen
If Seattle Mortgage had been using that name for 5 or more years, and the US Trademark office gave them that trademark, then apparently the trademark office believed it was not too generic. Which means they are allowed to request that (and most likely force) others in a similar business to stop using it, if it might be confusing to the consumer.

That's my understanding of the issue. It seems to me that the Trademark office is the one that had to first decide if something is too generic or not, before they give out the trademark. Once they decide it, then it's a done deal. (Or maybe others are allowed to appeal later? I really don't know.)
Unfortunately the government bodies issuing trademarks, copyrights and patents is not doing any serious due dilligence and in most cases issue the request and then let problems get worked out in court.
Try looking at the claims of Acacia Media...
How is it possible that anyone with a sane mind could think Seattle Mortgage could be specific to one company.
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