Trademark dilution or not?

[lextalionis]

My new site's logo cheesybay.com may be in violation of trademark laws.

[edit]
I have changed the logo. The old one can be seen here:
http://www.cheesybay.com/img/cheesyone.jpg

Sued or not? Your opinions appreciated.

 

[DNQuest.com]

Good thing you changed the logo, that was too obvious...

As far as your current one, ebay will staill take exception to it. They go after anything with bay in it, and since it is an auction site, they will claim TM violation.

 

[lextalionis]

Hey thanks for your thoughts, it isn't an auction site, its a digg site. The word bay is public domain as far as I can tell.

That's why it isn't say cheesebay or strangebay, the word ebay would give them cause for complaint. In retrospect the logo was completely in violation.

 

[DNQuest.com]

ebay goes after anyone with "bay" in it. They will say it is dillution or thier TM. This isn't a guess on my part, it is what they have been doing for years. Anything confusingly similar to ebay (the -bay part), they have been going after. Your site does deal in auctions.

 

[Dave_Z]

http://www.namepros.com/legal-issue...demark-dispute-ebay.html?highlight=perfumebay

 

[jberryhill]

That's why it isn't say cheesebay or strangebay, the word ebay would give them cause for complaint.

Oy...

"Cheesybay" is phonetically closer to "ebay" than "cheesebay".

The site is about auctions, and includes a phonetic equivalent of "ebay".

The power of self-delusion is awesome.

 

[fonzie_007]

I'm glad you changed your logo. The first one basically was crying for a lawsuit. I think you have a losing case on your hands, but it is up to you to fight it. I personally detest ebay as a company, so I wish you the very best in any legal battle against them.

 

[lextalionis]

Self-delusion has nothing to do with trademark law, hence the call for advice.

Which in consensus, seems to agree that cheesybay.com is in violation, but no one has in fact provided proof the violation, only said that such exists.

While I am apparently delusional, you are obviously omniscient, and can CITE your reasons for phonetic infringement, then maybe we will both know.

Thanks for the link, from that article:
Judge Keller's original ruling was a victory for Perfume Bay in every aspect of the lawsuit, other than the URL. The judge had found no actual confusion between the trademarks Perfume Bay and eBay or any dilution of the eBay mark by Perfume Bay under federal or state law, and no breach of settlement agreement by Perfume Bay. Further, the judge found that Perfume Bay had no intent to infringe on eBay's trademark and that the company is entitled to continue using its name, logo and slogan "Where perfume lovers go." As a result, the U.S. Patent and Trademark Office has been ordered to register the Perfume Bay trademark for the company.

So apparently there is precedent. Regardless, I am changing the name to avoid the swarm.

Thanks for your responses.

 

[primacomputer]

Your best defence would probably be on the grounds of parody. You are given much more leeway here. After all, if your parody is so dissimilar to what you are trying to parody then no one will “get it”.

 

[lextalionis]

Thanks for the lead prima, more on parody use from:

http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

Finally, certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of incorporating such First Amendment interests into the analysis. For example, some courts have applied the general "likelihood of confusion" analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark.

So, for example, a risqué parody of an L.L. Bean magazine advertisement was found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like character named "Spa'am" in a Muppet movie was found not to violate Hormel's rights in the trademark "Spam." Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). On the other hand, "Gucchie Goo" diaper bags were found not to be protected under the parody defenseGucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo "Enjoy Cocaine" were found to violate the rights of Coca-Cola in the slogan "Enjoy Coca-ColaCoca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). Thus, although the courts recognize a parody defense, the precise contours of such a defense are difficult to outline with any precision.

Another great site on the subject:
http://www.patentfla.com/articles/trademark_parody.htm

Your best defence would probably be on the grounds of parody. You are given much more leeway here. After all, if your parody is so dissimilar to what you are trying to parody then no one will “get it”.

 

[jberryhill]

Make up your mind. You can't say it is not confusing and it is a parody at the same time.

Parody is what is called an affirmative defense. In order to establish a parody, you have to admit that you were intentionally referring to the mark in such a way as to invoke an association between what you are doing and the trademark itself. Then, you go on to demonstrate that the reason for your reference was to make satiric commentary.

Your opinions appreciated.

Suuuure they are.

Google the following terms - phonetic equivalents trademark - on your own time.

Perfume Bay has been around since 1999, and you obviously do not appreciate the status of that case. The district court judge found that there was a likelihood of confusion, and ordered Perfume Bay to put a space or underscore in their domain name. Judges don't understand this stuff very well, so Perfume Bay applied to the appeal court for a stay of that injunction.

You'll notice that they are apparently preparing for the last shoe to drop in this ongoing set of proceedings, as the domain perfumebay.com re-directs to perfume-bay.com.

Look at what you quoted, and notice the words "OTHER THAN THE URL". Ponder the significance of those words in that sentence for a moment or two.

 

[lextalionis]

Make up your mind. You can't say it is not confusing and it is a parody at the same time.

If you do not understand why I started this thread, there is no need to comment.

Your opinions appreciated.

Suuuure they are.

Obviously they were. As mentioned in my post, I deleted the site before your last post.

 

[fonzie_007]

I think all JBerryHill is trying to say is that if you really want to keep this domain name, you have to figure out what your strategy is for keeping it. Your best bet may be under parody, which as JBH said is an affirmative defense. In other words, you are basically conceding you are infringing on TM but only insomuch as to conjure up the image of ebay. Courts understand that for a parady to be successful at least a minimal amount of infringing may be needed to conjure up the relationship. However, the doctrine of fair use under parady only extends too far. Copy too much and you will be busted. On the flip side, if you copy too little, web surfers will have a difficult time understanding or realizing what the parady is.

 

[Dave_Z]

you have to figure out what your strategy is for keeping it.

Actually, it's why you got it.