Fighting back against a Trademark bully!

[cyberken13]

www.floridaweekly.com

Hello everybody,

It has been a while since I’ve posted here. I wish this could have been under better circumstances but this is a moment where we are reaching out to everyone.

We are in a fight with a Trademark bully. This bully is a newspaper company which bought similar domain names to ours when they launched their publication this April; more than two years after we had launched the same idea. They also filed for a state Trademark this year on the merely descriptive name combination, which requires secondary meaning, and now they are trying to use that to bully us out of our legitimate rights and business.

It was a simple choice; back down and give in or take on the financial burden and fight back. We chose the latter and filed against them! We are asking everyone to visit Florida Weekly , read the article about the case, and download the case files we have posted there. They will provide you with a more in depth look at the case. The burden of proof is on our side and as this case unfolds it will shed light on Trademark bullies trying to pull the wool over the system that was meant to protect all of us.

Update 08/19/07:

Please, while you are there check out our support page. We will be posting some of our domains for sale there as well as offer advertising in an effort to give you an opportunity to help.

Thank you everyone.

Ken

 

[briman1970]

This is actually comedic by now. Next thing we know, they're going to charge us NP$ to witness the spectacle... :hehe:

IB

Not a bad idea... I'd pay 50NP$ for a ticket to this thread. :hehe:

 

[verbster]

Not a bad idea... I'd pay 50NP$ for a ticket to this thread.

A weekly pay per view category where the viewers vote for the winning jabster, who can then return to the champions' tournament at the end of the year. Admission fees go to a fund a yearly mud wrestling bonzo or the charity of your choice. Heck, this sounds like it could be a great idea for its own website...matching wits, barbs, insults....you name it. I like the idea so much, I bought jabsters.com for a site....oh, whoops, sorry guys...didn't mean to get in your way..

 

[labrocca]

jabsters.com....nice



Let me know if you need an antagonist forum troll around to stir things up. I just happen to know one.

 

[cyberken13]

labrocca,

It's evident that you have no purpose here other than to try to minimize our situation. There are answers to all your questions but they mean nothing to you here.

You say you believe in profiteering. I do not.

You demonstrate time and again that you know nothing of our case. The arbitration you mention was offered with the INTA (International Trademark Association). The remedy there would have been to determine who has the rights to use that mark under the currently debated category and if the mark was generic enough to prevent anyone from having exclusivity without secondary meaning. The losing party would pay all legal fees. This arbitration did not involve the sale of our domain at all.

As I stated in the beginning to you, I know who you are and you had my respect because I know your reputation in getting things fired up. This argument in itself is futile and all I seek is resolution. I have no problem answering questions you have.

Again I reach out to you and anyone else who wants to know specifics beyond what I can post here to contact me at [email protected]

I agree that there are some amusing things in this thread but this case as a whole has not been amusing to us at all. We have taken it very seriously and have backed that with much of our own time and money.

 

[labrocca]

You demonstrate time and again that you know nothing of our case. The arbitration you mention was offered with the INTA (International Trademark Association). The remedy there would have been to determine who has the rights to use that mark under the currently debated category and if the mark was generic enough to prevent anyone from having exclusivity without secondary meaning. The losing party would pay all legal fees. This arbitration did not involve the sale of our domain at all.

Well that's good to know. I was wrong then in my assertion.

I agree that there are some amusing things in this thread but this case as a whole has not been amusing to us at all. We have taken it very seriously and have backed that with much of our own time and money.

I thought the ordeal is over? You are pretty much waiting for papaerwork to go through. I did congratulate you.

Be cool Mr. CyberKen.

 

[cyberken13]

Thanks labrocca,

I appreciate that.

I wish this was over. Their lawyer is working up the papers but they could still place things in there that could require further discussion. It will probably take a month to complete.

 

[cyberken13]

Update

I just want to give everyone an update on the case.

We've tried for more than a month to negotiate with Florida Media Group LLC and their lawyers. We've even offered them arbitration and early mediation again and they have refused both. Their terms and responses to date have for the most part been unreasonable.

As of today we have told them to file their response to our lawsuit. If this pushes forward everyone will have an opportunity to see all the evidence once discoveries are completed.

 

[labrocca]

Woo Hoo...looks like we have an Epic starting. Cool. I still don't know who to root for.

 

[Dave_Z]

I still don't know who to root for.

Don't have to. Just sit back, watch, and enjoy.

 

[cyberken13]

Update: Defendant responds

The defendant, Florida Media Group LLC, has finally filed their response to our Federal lawsuit against them. We are still reviewing it before we fill our response back so I cannot issue any specific comments here about it until then. I will say that we were very happy that they finally stepped up after dragging this out for almost four months. Now we can get to the brass tacks.

You'll find some of my next comments very interesting ...

 

[Dave_Z]

He he, looking forward to reading them.

 

[labrocca]

I will say that we were very happy that they finally stepped up after dragging this out for almost four months.

Four months is nothing...be prepared for this to drag out for years.

 

[cyberken13]

Our lawyer has had the required sit down meeting with Florida Media Group's lawyer last week to go over the case management report. It has been finalized and filed with the Middle District. We'll be posting it on www.floridaweekly.com within the next few days. The full calendar is slated to carry through until early October of next year.

It is possible for them to appeal once a decision has been made by the judge but we believe the shear weight of the evidence and their own admissions already will clear this up and keep this from becoming any long term legal dispute.

 

[cyberken13]

Major News !!

The USPTO has refused Florida Media Group's Federal application for the "Florida Weekly" mark (Link). They filed this application on the very day we spoke to them for the first time. They have only used (first use in commerce) the name "Fort Myers Florida Weekly" since April 2007 so they cannot even get a 2(F) registration.

Couple that with the facts that we bought and have been using the names two years before they existed and their recent admission (response) to making offers to buy the domain back in June 2007 before they even notified us about their recent use or C&D letter.

We'll have more soon after we've reviewed the rest of their response...

 

[jberryhill]

Anyone who would like to review the answer on their own may download it from here:

http://www.johnberryhill.com/fweekly-answer.pdf

The fun begins at page 23 with the counterclaims the defendant has made against the plaintiff.

What's interesting is that the defendant appears to have figured out certain definite facts. As to all of the various claimed activities by the plaintiff concerning several years of preparing to use the domain name without actually posting any content (until the RSS page showed up earlier this year), the defendant does not merely state it is without knowledge of them, but affirmatively denies those allegations.

Semoran LLC...exactly what is that company?

That's an interesting question in this context, Jesse.

According to the Florida Secretary of State, it is an LLC formed in 2006:

http://www.sunbiz.org/scripts/corde...d=&names_comp_name=SEMORAN&names_filing_type=

According to the complaint in this case, however, this 2006 LLC seems to have been doing a number of things as early as 2004 which, if you think about it, is a pretty neat trick.

 

[cyberken13]

The morning of the day FMG filed their response they first contacted our lawyer, again, asking to make information in this case confidential in the public record. We said no way. After seeing their response we can see why and we will be filing our response to them next week in court.

For FMG to state "denied" to the majority of our complaints in no way justifies their blanket response as the truth. They are simply saying 'fine, prove it'. "Denied" holds no wait without evidence to support it or their counterclaims. They continue to make false statements and representations of the facts. We will easily display this to the courts. Again, we have in our own right used FloridaWeekly.com for almost two years prior to the existence of FMG or their newspaper. The fact is they knew this when they registered Florida-Weekly.com and when they concealed their identity when making offers directly to us, through a third party with a generic email address, in June and July of this year; offers well in excess of our registration fees. Not once during those offers did they "put us on notice".

How have they figured out certain definite facts when they consistantly claim "denied" and "defendant is without knowledge or information sufficient to form as basis as to the truth or falsity of the allegations ... and therefore denies same". They even deny our very existence in their response and then admitt that we exist in their counterclaim. What?

As another example to their lack of knowledge and honesty, FMG claims that when we registered CentralFloridaWeekly.com in October 2006 we somehow had knowledge and were under notice to their claimed rights to the mark. FMG and their state trademark application didn't even exist until February 2007. Their first use in commerce wasn't until April 5th 2007.

FMG also counterclaims that we had FloridaWeekly.com for sale. We've never had it for sale. We bought it back in late 2004 from someone selling it on Sedo and we've had it directed to our FloridaWeekly.com nameservers ever since. Of course, we have all the proof to back that up.

I could keep going but the fact is FMG's response is just complete nonsense.


Prior to forming Semoran I owned the domain names, 2004, as an individual and then assigned all domain rights and other related assests to Semoran in 2005. We formed Semoran Media Inc. on 05/09/2005. It operated until we changed the name to Semoran LLC on 06/29/2006. There are no neat tricks here as you claim. All it would have taken was a thorough search of "Semoran" on Sunbiz.org's website and a lookup on the whois records at DomainTools.com.

What is Semoran? It is the company me and my fiancee formed to manage our domains that we are developing.

 

[jberryhill]

I owned the domain names, 2004, as an individual and then assigned all domain rights and other related assests to Semoran in 2005.

Be that as it may, it's not what your complaint says.

How have they figured out certain definite facts when they consistantly claim "denied" and "defendant is without knowledge or information sufficient to form as basis as to the truth or falsity of the allegations ... and therefore denies same".

There is a significant difference between "denied" and "lack of information, therefore denied." Federal Rule 11 requires answers and responses to be made upon due inquiry. You are correct that neither sides contentions are proven in the pleadings. However, there must be a factual basis, on information or belief, for "denied" as opposed to "lack of information, therefore denied".

One gets the distinct impression that they have a basis for denying that "Semoran", as claimed in the complaint, performed any acts in 2004.

 

[cyberken13]

Even by using Semoran as the claimant as early as late 2004 it is not misrepresentation of the material facts. We are the ones who registered the domains, we incorporated Semoran, all rights were transferred to Semoran by us and we remain Semoran to this day. If necessary, all it takes from us is a notice of clarification with the courts.

Let's say if the court were to consider striking that earlier date; the earliest then would be June 23, 2005 when we began marketing FloridaWeekly.com. This still represents a significant amount of time predating anything Florida Media Group LLC claims for use.

"...there must be a factual basis, on information or belief, for "denied"...". We'll welcome their submissions of material evidence as to their claims of facts or denials.

I appreciate the fact that you have an interest in this case and I'm really trying to understand you position, but at the moment your comments appear to be directed more to procedural matters and less about the hard facts which I stated to you in my last response. Please comment on those and we'll pick it up from there Mr. Berryhill.

Thanks

 

[labrocca]

the earliest then would be June 23, 2005 when we began marketing FloridaWeekly.com

I still have seen no evidence presented by you that indeed you have marketed the site in 2005. As a matter of fact what could you market since you had no site? Are you saying you spent time and money marketing BEFORE you even had a site up?

http://web.archive.org/web/20051125040510/http://floridaweekly.com/

I love this thread...it just keeps getting better and better every week.

All this over a domain that sold for $35 in 2004.

http://www.DNF/f5/huge-sale-list-domains-2-thread-52985.html

For me personally...I just have to google floridaweekly.com and see that all the marketing you ever did was for this lawsuit. There isn't a single instance of floridaweekly.com being advertised or mentioned until you had this suit. Even now..you aren't marketing it...you are posting in forums and blogs about the "bully".

So lame. I hope you get spanked in court.

 

[cyberken13]

Our marketing is no less relevant than the marketing FMG makes claims to. We clearly state our evidence of use and marketing in our complaint. I suggest reading our filings.

Again, the hard facts I have stated here recently are ignored and arguments that have previously been discussed are brought up in their place. Amazingly, simple statements of "denied" are accepted over the hard facts that we raise. To each his own I suppose.

I just don't see the point in reaching out to you anymore Labrocca. You are bringing nothing of value to this thread.

"I hope you get spanked in court". We'll let the court decide that, but I want no apologies from you when you are wrong again.

 

[jberryhill]

I'm really trying to understand you position, but at the moment your comments appear to be directed more to procedural matters and less about the hard facts

I don't have a position. Absent the facts of how you used this mark in public, which you decline to provide for reasons known only to you, one can only comment on procedural matters.

Both sides have made factual contentions. Neither side has backed them up with anything tangible. What more is there to say?

You can say "we began marketing" at the birth of Christ, and nobody here, especially me, is going to provide anything to contradict that. But nobody here has seen anything to prove the proposition either.

I certainly haven't seen your email from June 2007, nor have I seen the documents assigning alleged trademarks between and among you and various Semoran entities. Accordingly, I surely cannot comment on these things.

As Jesse points out, about the only thing externally visible is a graphic retrieved by the Internet Archive showing a "TM" next to a graphical depiction of:

Fl<seagull>RIDA
WEEKLY

in a particular font, with no apparent links to anything.

(on edit: to be clear, the logo in the graphic is not a trademark use of "FLORIDA WEEKLY")

About the only other externally apparent fact is that there have been 45 posts of news items, some only tangentially relating to Florida, since June 2007, and 1725 hits to the index page since the counter was installed.

The Florida Weekly ™ concept launched in 2005. After two years of hard work, marketing, traffic generation, traffic analysis and development (with the natural delays of life taking their toll), we’ve finally moved into phase two of our development.

Okay, so it took "two years of hard work, marketing, traffic generation, traffic analysis and development" to get 1725 hits in four or five months. Taliban.com, a lander page, received 2075 hits last month. I'm glad I didn't put two years of work into that.

Are you saying you spent time and money marketing BEFORE you even had a site up?

Jesse, shame on you. You obviously haven't read the complaint, and the description therein of all sorts of activity short of actually running a website.

 

[labrocca]

I just don't see the point in reaching out to you anymore Labrocca. You are bringing nothing of value to this thread.

Have I ever? I ain't your lawyer...what should I be adding of value for you?

Reaching out to me? What for ? Pity? Oh wait..that's right the original intention of this thread was for you to ask for donations for your legal defense from a bully. LOL


You don't have to respond to every post I make Ken...as a matter of fact I don't know why you do.

 

[cyberken13]

37. On or about June 25, 2007, an individual indentifying himself as "Doug Henderson" made an offer to purchase FLORIDAWEEKLY.cOM. This offer was ignored, given the ongoing work on the project.

ANSWER: Denied, except it is admitted that Doug Henderson made an offer to purchase the domain FLORIDAWEEKLY.COM on or about June 25, 2007.
-------
38. On July2, 2007, the Plaintiff received a second purchase offer from "Doug Henderson", and responded with certainty that the domain name FLORIDAWEEKLY.COM was not for sale.

ANSWER: Denied, except it is admitted that Doug Henderson made an offer to purchase the domain name FLORIDAWEEKLY.COM on or about July 2, 2007 and such offer was declined.
-------
39. The Plaintiff believes that the individual who indentified himself as "Doug Henderson" is affiliated with the Defendant and is prepared to explore this issue through discovery.

ANSWER: Denied, except it is admitted that Florida Media asked Doug Henderson to inquire into purchasing FLORIDAWEEKLY.COM
-------


EMAILS:


-----------------------------------------------------------------------------
From: Doug Henderson <[email protected]> [Add to Address Book]
To: [email protected]
Subject: Domain
Date: Jun 25, 2007 1:36 PM

I see that you own the domain FloridaWeekly.com and are not currently using
it.

I would be willing to pay $200 for the domain name.

Let me know if it is for sale.

Thank you, Doug

Doug Henderson
[email protected]
------------------------------------------------------------------------------
From: Doug Henderson <[email protected]> [Add to Address Book]
To: [email protected]
Subject: FloridaWeekly.com
Date: Jul 2, 2007 11:27 AM

I see that you own the domain FloridaWeekly.com and are not currently using
it.

I would be willing to pay $200 for the domain name.

Let me know if it is for sale.

Thank you, Doug

Doug Henderson
[email protected]
-------------------------------------------------------------------------------
Date: Mon, 02 Jul 2007 13:05:13 -0700 [07/02/2007 01:05:13 PM MST]
From: [email protected]
To: Doug Henderson <[email protected]>
Subject: Re: FloridaWeekly.com
Headers: Show All Headers
Hi Doug,

This domain is not for sale.

Thanks,

Ken
[email protected]




Quoting Doug Henderson <[email protected]>:

[Hide Quoted Text]
I see that you own the domain FloridaWeekly.com and are not currently using
it.

I would be willing to pay $200 for the domain name.

Let me know if it is for sale.

Thank you, Doug

Doug Henderson
[email protected]

 

[labrocca]

I don't get it. Do you really believe that because you turned down a $200 offer we are expected to believe you had no intention to sell the domain? HAHAHA...please dude...we are smarter than that. Any good domainer would turn down that $200 offer. And normally when I get lowballs like that I don't even bother to respond.

Now IF the emails asked you for a price and your response was "sorry not for sale" that would be a different matter. You are trying to establish first use rights but they don't exist.

This offer was ignored, given the ongoing work on the project.

So you say...you might as well have written.

This offer was ignored, given that I was attempted to fly to the moon.

You ignored the offer because it was a lowball. The fact that you finally did sit down and speak numbers proves that.

You say I add nothing of value to this thread...well you never added anything of value to floridaweekly. Hence why I don't believe anything you say. I just don't.

 

[jberryhill]

We clearly state our evidence of use and marketing in our complaint. I suggest reading our filings.

Well, that's just nonsense.

Let's have a look at the paragraphs in the Complaint relevant to claims of use and marketing:

8. In 2004, Plaintiff SEMORAN began conceptualizing an online business, and on April 22. 2004, the Plaintiff purchased a web server for this business.

9. In late September, 2004, SEMORAN, through its Director, Kenneth Lima (hereinafter "Lima') devised the "Florida Weekly" online newspaper concept and began acquiring domain names for the purpose of launching this concept.

16. On or about September 28, 2004, SEMORAN redirected all of the aforementioned domain names to www.floridaweekly.com in order to provide unified internet traffic flow to the flagship domain name in the Plaintiff's publishing plan.

17. On or about November 8, 2004, Plaintiff began making preparations to launch its online news and information website, including the establishment of e-mail accounts, name servers, and other technical architecture, with a possible print publication to follow, (depending on the success of the online endeavor).

18. This endeavor was to generate a profit by selling advertisements based upon the amount of web traffic driven to www.floridaweekly.com.

19. Stage one (1) of this project was the generation of web traffic to sell to potential advertisers, which is (in itself) a good or service within the meaning of the Florida Trademark Act and the federal Lanham Act.

20. At this point, Plaintiff began using the mark FLORIDA WEEKLY, in connection with goods or services in this state and nationwide.

21. On or about November 16, 2004, SEMORAN moved the aforementioned domains to a dedicated web server in order to handle the predicted traffic.

22. On or about November 16, 2004, Plaintiff launched stage two (2) of its project, the FLORIDA WEEKLY website, a true and correct copy of which is atached as Exhibit A.

23. On or about June 23, 2005, SEMORAN and Lima designed FLORIDAWEEKLY.com promotional materials including banner ads and business cards, and began marketing FLORIDAWEEKLY.com to individuals and businesses in interstate and intrastate commerce. These efforts generated even greater web traffic - the most valuable commodity in the online sales and marketing business.

24. On or about June 23, 2005, the Plaintiff announced to the world that SEMORAN claimed rights in the mark FLORIDA WEEKLY by affixing the TM symbol to the name and the logo on the website FLORIDAWEEKLY.com.

25. At this point, the use of the mark FLORIDA WEEKLY by the Plaintiff in intrastate and interstate commerce was legally established.

26. On July 29, 2006, SEMORAN completed the establishment of the electronic magazine concept for FLORIDAWEEKLY.com.

27. In May of 2007, the Plaintiff sought financial support from a variety of investors for this endeavor. Given the depth of the Plaintiff's endeavors and plans and desire for control of the concept, an agreement could not be reached.

28. On or about July 5, 2007, the Plaintiff re-initiated its business plan to launch an active website at FLORIDAWEEKLY.com, restoring the old site and creating the architecture for the third (3rd) phase of the project.

29. On July 8, 2007, the Plaintiff moved FLORIDAWEEKLY.com to a new dedicated Internet web server.

30. At this time, the Plaintiff has entered phase (3) and currently maintains an active website at FLORIDAWEEKLY.com in the form of an online publication about news and events in Florida. This publication, published weekdays, provides news and information from and about Florida, and provides links to other Florida-based websites, as well as providing original copy and content produced by sEMORAN.

31. Phase three (3) of the project has resulted in even greater web traffic, generating even more product (Internet web traffic) for the Plaintiff to sell.

Now, mind you, you are claiming "first use in commerce" as of August 2007 in the application to the Supplemental Register in the USPTO for "FLORIDA WEEKLY":


Word Mark FLORIDA WEEKLY

Goods and Services IC 041. US 100 101 107. G & S: Online periodical publication dealing with news, information, and events featuring subjects of interest to residents of Florida and visitors to Florida. FIRST USE: 20040927. FIRST USE IN COMMERCE: 20050805


I particularly like the allegations of vague "events" such as completing "the establishment of the electronic magazine concept", whatever that may be. It sounds like the definite "proof" of Iraq's "weapons of mass destruction program planning activity" over which we invaded an entire country.

The concrete acts described in your own complaint appear to be:

- September 2004: buying some domain names

- June 2005: "designing" some business cards and banner ads (paragraph 23 isn't really clear on whether these business cards or banner ads were actually seen by any human eyes)

And then, as can be seen in the site's own archive, launching a website in 2007.

Many of the paragraphs, such as my favorite - paragraph 20 - begin with "At this point" or "At this time" without any definite reference to when "this point" or "this time" might be.

Most of the other activities are things like obtaining servers, moving the "site" to different servers, planning various things, and so on, some of which are purely mental activities like completing the establishment of a concept, noted above. The "old site" gets "restored" at one point.

Okay, now, Ken, here's the kicker. I want you to take a close hard look at paragraph 22 of your complaint:

22. On or about November 16, 2004, Plaintiff launched stage two (2) of its project, the FLORIDA WEEKLY website, a true and correct copy of which is attached as Exhibit A.

Now, take a close look at Exhibit A. It is a copy of the blog section of your website, with an article dated July 31, 2007.

What I love about paragraph 22 of the Complaint, is that if one is not careful, one might think that Exhibit A is a "true and correct copy" of the website as it appeared in 2004. But of course, that's NOT what Exhibit A is. Exhibit A is just a "true and correct copy" of "the website". Paragraph 22 is carefully worded not to say it is a copy of the website as of the date cited in paragraph 22.

It's very clever, but among all of the whirling wheels of claimed "activity", I can't see, on a straight reading of the Complaint alone, where any "commerce" gets going.

Amazingly, simple statements of "denied" are accepted over the hard facts that we raise.

I'm not putting any more weight on their denials than on your assertions. The only "hard fact" at issue is your design of business cards and banner ads as of June 2005, which we can't see. I only commented that it is unusual for someone to "deny" an allegation, rather than to state lack of knowledge, unless they have a Rule 11 basis for denying it. Now, it could be because of the simple fact that there is no way in Hell that "SEMORAN" performed a number of the recited acts before its existence. And, no, forming a separate entity is not a "name change". The "Plaintiff" in the suit is Semoran LLC and is thereafter referred to as "SEMORAN".