[thelist] Logo Design (infringement) help requested

[James Parsons]

>Message from Belinda Johnson (6/27/2003 09:52 PM)
>
>>His email to me: "Your client has not only appropriated our name, they have
>>copied our logo.
>
>I forgot to mention. It's unlikely his company has been around long enough,
>or his trademark is distinctive enough that yours can be considered as a
>case of dilution.
>http://www.inta.org/dilution/
>
>His domain was only registered 5 months before your client's.
>
>regards.
>-marc

marc makes a point, here.

For whatever reason, I get a feeling that none one of these parties really
has what you would call deep pockets. To me, it kind of feels like a guy
with maybe not so deep pockets is maybe thinking the other guy might have a
bit of loose change? If this is the case, I don't think I'd, personally,
sweat it until I at least received a bonafide "cease & desist" letter from
an attorney. Who knows for sure. It may just be me, but frankly the
"hypnosis center" or "hypnotricks" (or whatever) racket just kind of smacks
of spamminess. But then your client is trying to sell gas masks and hazmat
suits. So, I guess it's whatever turns you on.

But, for the positivechanges.com guy to go after the positivechanges.biz
guy, the positivechanges.com guy is going to have to pay an attorney. My
hunch is few attorneys are going to take a case like this on a contingency
basis so that means cash on the barrel. In any case, if legal action of
some kind was really a liklihood, I wonder why somebody didn't just get a
"cease & desist" letter from an attorney?

That being said, is there really a trademark infringement going on here? A
cursory check of the US Patent & Trademark database didn't turn up anything
for "Positive Changes Hypnosis Centers" or "Patrick K. Porter" (do we even
know this guy is a Dr.?) who shows as the head cheese of said organization.
Not that I could find, anyway. This doesn't mean that it isn't in there
somewhere under some other name(s), but it tends to suggest that baring
something more substantial, there is no trademark right other than that
conferred through usage. By taking down your clients site, however, you may
have weakened your position, or their position, as an attorney might be
able to make an argument that this acknowledged that somebody felt there
was a legitimacy to the claim.

Whether there was, in fact, a deliberate copying of trademarks going on is,
yet, another question. Frankly, I don't see a huge similarity other than
the use of a triangle and a swooshy thing or two. Well, triangles are one
of the basic geometric forms. Your client's Positive Changes logo contains
what appears to be kind of a little sunrise/sunset vignette. As to suggest
any intent on the part of the positivechanges.biz guy to try and dilute or
gain from any so-called trademark established by the positivechanges.com
guy, it might make more sense if they were in even vaguely similar
businesses.

Let me say I'm not a lawyer but I've also been around the block a time or
two. You should have a clause in your contract exempting you from liability
for your clients' content, potential trademark infringements, etc., but you
might want to check with a lawyer as to what liability you have, if any. If
it were me, I'd probably put my client's site back online until they (my
client) instructed me to take it down or until I got something a bit more
substantial and credible than an irate email from someone purporting to be
the owner or proprietor of the other site.

Just as a parting anecdote: A couple of years ago I got a somewhat vehement
email from a party purporting to be the CEO of a corporation demanding that
we shut down a client's site. The client was a franchisee of the
corporation the letter writer claimed to be the CEO of. This message, too,
claimed trademark infringement and was received around 2:00 in the morning
having been sent from the next time zone over where it was 3:00 in the
morning. The first thing that occured to me is, "What corporate CEO is
surfing the web at 3:00 in the morning looking for trademark infringements
on the part of somebody who, logically, would be one of his own
franchisees?" So, I did nothing. Nor did we respond to the email. In the
morning, we called the client who seemed genuinely befuddled over the whole
thing. The CEO of the corporation he was franchised under (a manufacturer
of non-slip industrial flooring surfaces) was, after all, a friend of his.
Well, turned out the email was actually from another franchisee who felt
that my client had been encroaching on his territory but, otherwise, had no
authority whatsoever over trademarks and logos for the corporate product
nor any say over who gets to use them and how. So, just because somebody
sends you an email doesn't mean they are who they claim to be. Also, I
later found out that it was subsequently determined that the other
franchisee was the one doing some encroachment and, as a result, his was
the franchise that got yanked. My client was entirely blameless and within
his right to use the logos.


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Not a lawyer, nor do I play one on TV.