Bold Vision Consulting now has a decision to make after getting trademark cease & desist
Lynnelle Bianco is a business consultant with over 25 years of experience in sales, marketing, and strategic planning. According to her website, she began her consulting business, Bold Vision Consulting, last year. Unfortunately, it appears she did not conduct a trademark search before she started up her business. If she had, she no doubt would have found out about Dublin, Ohio based Bold Vision, LLC which had registered the trademark BOLD VISION for Business Management Consultation.
The Ohio firm first used the mark on October 15, 2001, filed for registration on March 22, 2002, and was registered on August 12, 2003.
According to Ms. Bianco's blog, she got a cease and desist letter from an Ohio attorney demanding that she cease using the Bold Vision name. She lays out her two choices as follows:
A) Change the name of my business which means:
• Find another name that represents my work, my values, my views and …yes, the VISION of my business as well as Bold Vision.
• Redesign and re print every piece of marketing collateral I’ve created in the last year (and PAY for all this redesign and reprinting) Oh, this includes the website AND finding a new domain name - which means the new company name has to be an unregistered as a domain name also.
• How about every article I’ve ever written and published? Every article out there has Bold Vision noted in the by line. This BLOG is just one place where you can find my articles. I’ve also submitted articles for publication on various business sites and in newsletters here and there, so technically, I’ll have to remove the “Bold Vision” from these publications also… after I track them all down.
• And, get this – I’ll have to remove any reference to Bold Vision in any meta tag or search term from any website, newsletter or e-copy associated with my business.
Or
B) Respond to the attorney’s letter with an alternative view / plan / suggestion, which means:
Find a lawyer who is experienced in IP law, hire them to review the situation and write the response.
Wait for the Ohio attorney’s response to the response.
Decide whether to respond to the response to the response and…. well you get it. $$$$
Either choice will no doubt be painful.
I commend Ms. Bianco with admitting her error for the world to see in order to educate her readers of the real and potentially expensive dangers of adopting a name or trademark without first conducting a trademark search. I wish her well with whatever decision she makes. From the tenor of her blog post, I have no doubt that her vision will remain bold.
Tags: trademark, trademark search, search, naming, risk, name change, cease and desist
2 Comments:
All that would be needed is a disclaimer on her part. Stating she is not affiliated with the company in Ohio, placed on her opening page. Their complaint can only stand if they state it confusingly similar to their trademarked name, with the disclaimer they don't have a case and there is no need for the expense of an attorney.
Mark,
Thanks for the comment, but I disagree that all that is needed is a disclaimer to fix her trademark problems. See the Jews for Jesus case in which a disclaimer was used, but rejected as an adequate way to avoid confusion:
"It is well-established that likelihood of confusion 'should be determined by viewing the two marks from the perspective of an ordinary consumer of the goods or services.' " Ford Motor Co., 930 F.2d at 293. The Defendant appears to argue that, if Internet users are able to access his Internet site, then those users are sophisticated enough to realize that his Internet site is not affiliated with the Plaintiff Organization. See Defendant Brief at 22. This argument ignores the fact that an individual may be a sophisticated user of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then may be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization. See Green Products, 992 F.Supp. at 1077 (stating that use of plaintiff's trademark as defendant's domain name is likely to cause confusion as to who owns Internet site much like if store had competitor's name on it). The Disclaimer does not alleviate this problem.
As observed by the court in Planned Parenthood, "[d]ue to the nature of Internet use, defendant's appropriation of plaintiff's mark as a domain name and home page address cannot adequately be remedied by a disclaimer." Planned Parenthood, 1997 WL 133313, at *12. In addition, considering the vastness of the Internet and its relatively recent availability to the general public, many Internet users are not sophisticated enough to distinguish between the subtle difference in the domain names of the parties. See Green Products, 992 F.Supp. at 1078 (finding Internet users do not undergo a highly sophisticated analysis when searching for domain names). Unlike the disputed Internet sites in Teletech and Interstellar which contained information completely different from the services offered by the trademark owner, in this case the information provided by the Defendant is related to the information disseminated by the Plaintiff Organization. Accordingly, unlike in Teletech and Interstellar, a reading of the Defendant Internet site will not eliminate the likelihood of confusion between the Defendant Internet site and the Mark and/or the Name of the Plaintiff Organization. This is the so even with the addition of the Disclaimer.
Also see this Likelihood of Confusion blog post.
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