Legal Question in Technology Law in California

Trademark Name

I run an Electronic Cigarette Forum. An Electronic Cigarette is a device used as a ''safer alternative'' to smoking tobacco.

Another companies affiliate has contacted me stating that I could be in line for a lawsuit because I'm using the term ''Esmoke'' in my domain name (esmoketalk) They have a trademark on the word ''esmoke''

I do not sell anything on the site although I do plan to in the distant future (using a different name)

Should I be concerned?

Asked on 4/09/09, 5:14 am

3 Answers from Attorneys

Gordon Firemark Law Offices of Gordon P. Firemark

Re: Trademark Name

Yes, be concerned about the expense of defending a lawsuit, regardless whether you win or lose.

If the trademark registration is valid, they may be able to force you to change your domain name.

My advice would be to negotiate with these folks to give you time for a smooth transition so as not to lose any subscribers, visitors, etc.

You probably DO need a lawyer to help you with such a deal.

Read more
Answered on 4/09/09, 6:40 pm
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

Re: Trademark Name

Yes! Any threat to sue you should be a matter of concern, even if it is obviously frivolous and you are sure of winning (which is probably not the case here). Even if you do win, defending a suit, especially one in the area of intellectual property such as trademarks, can be expensive.

Here, two concepts are worth researching: cybersquatting and cyperpiracy. They don't mean the same thing, but I do see some confusion in their use.

To me, cybersquatting means registering domain names that are, or might be, of value to someone else, such as "cocacoladeguatemala" in the hope, or with apparent intent, to ransom the domain to the other party owning the trademark. This practice is illegal, but only if done with the intent to profit from the trademark owner.

Cyberpiracy is the practice of registering a domain name that is so confusingly similar to that of another well-established firm that potential customers trying to find the established firm will stumble upon the similar site and do business with it, thus depriving the intended firm of business.

I am doubtful that you are engaging in either of these illegal practices, but maybe you are, and in any event if you are sued you may have to shell out tens of thousands of dollars in defense costs to establish your non-liability.

I suggest you do some on-line research using cybersquatting and cyberpiracy to see what others have to say and to read about cases where civil liability has been found, and others where the defendant has prevailed. This will give you a better feel for whether you have serious problems or maybe not. If the former, start talking to lawyers near you.

Read more
Answered on 4/09/09, 12:52 pm
Terry A. Nelson Nelson & Lawless

Re: Trademark Name

Of course. You've been warned of a lawsuit. Why shouldn't you be concerned about being sued and spending huge sums of money on attorneys and at risk of a judgment against you? Now, whether they can win, or even sue, depends upon all the facts, not just a your post here. If you are serious about getting advice and guidance, and legal help in resolving your problem before it grows, feel free to contact me.

Read more
Answered on 4/09/09, 1:51 pm

Related Questions & Answers

More Computer & Technology Law questions and answers in California