Blog receives a Cease and Desist Letter - Help Stop the Bullies.

[Nurselayer]

Hi all,

 

A very good friend of mine has a Facebook page, a blog, and a twitter account called "Inside London 2012".

 

He's recently received a Cease and Desist letter telling him that he couldn't use the name "Inside London 2012" as someone had trademarked the name "Inside". This sounds very dubious to me, I was hoping that someone with a better understanding of trademark law could help.

 

The letters can be found here - http://www.andywilkes.com/legal.htm

 

I hate to see a big company try to bully the little guy and this is exactly what this looks like to me. Please could you let me know if he should fight this, if he will have to change the name of his blog etc, what he should send in reply to their letters.

 

I think it's important to note that he was using the name "Inside London 2012" before their trademark existed.

 

Sorry if this is in the wrong section but I wasn't sure where to put it.

 

Thanks in advance for all your help

[BankFodder]

I'm just looking up a few things. Back soon

[BankFodder]

right, I find that this is an amazing registration –http://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-number?detailsrequested=C&trademark=2532531

 

This company has apparently been allowed to register as a trademark the word "inside" for certain non-particularised purposes connected with communication.

 

In theory this allows them to "corner" the word – inside – and to prevent anybody else using it in a way which distinguishes some kind of communication.

 

It is a principle of trademark law that you cannot register words or phrases so that the effect is to deprive other people of the use of that word in ordinary speech. Normally speaking there is no problem because most trademarks are invented words or else they are a phrase made up of a combination of words which makes it quite unlikely that somebody else would want to use that particular combination.

For instance, – inside world parasport -(which happens to be a registered trademark) is a phrase which belongs to the trademark owner. Being deprived of the use of this phrase –inside world parasport- is scarcely likely to bother anyone, but it does protect the trademark owners business against people who might want to use similar phrases to describe their own business.

 

Things get more complicated when you have phrases such as "the real thing". This may be a trademark, I don't know. But it is certainly used to describe Coca-Cola. The problem of course would be that many other people would want to use this phrase in quite natural English usage.

 

Things get even more complicated when you register single words such as – inside –. This is a very ordinary English word and I have to say I find it amazing that the trademark office have allowed this word to be registered. I notice that Dunsar Media, who are the owners of the word – inside – have also registered the same word but in the form of a graphic. In other words they are not only trying to own the word that they are trying to own it when it is expressed in particular graphic way. This is very normal and very acceptable with ordinary English words. What it means is that the word – inside – belongs to Dunsar as long as it is written in the way that they have registered. If you wanted to use the same word but expressed in some completely different graphic form then it wouldn't necessarily breached their copyright.

 

Personally, I think there are good arguments to say that the registration of the text word "inside" should be open to challenge. It is far too wide ranging. It is a single word. It has ordinary English usage.

 

I think that for Dunsar to stand a chance of making a successful defence of their trademark against somebody else's use of the word, they would have to show that the use of the word "inside" replicated very closely what they had registered.

 

In your friends case, he is using the word "inside" as part of an ordinary English phrase –Inside London 2012 –. This is not some meaningless slogan which has no context and no linguistic relevance to the subject contained in the blog. It is fully descriptive of the blog. The word – inside – is not being used on its own. There is no attempt to replicate the graphic logo which has also been registered by Dunsar. You describe the approach which has been made as bullying. I think that the approach is certainly relying on a strong-arm approach and it is expecting you to back down simply because you are not a lawyer. I don't see any trademark violation here, and if they did start an action against you I would recommend that you defended yourself and also brought a challenge against their registration – which I have already said is a surprising registration at best.

 

I notice that one of the arguments that has been made is that the blog title was already in use before the registration. If you have got evidence of this then you should assemble it all so that this matter is beyond doubt. Dunsar may decide to try on in terms of the arguments I have suggested above, but if you can demonstrate that you got there first anyway, then there is no contest.

[BankFodder]

just to add, I notice that Dunsar's lawyers have even tried to suggest that the use of the phrase "inside London 2012" may be in breach of other people's trademark as well.

 

I think the fact that Dunsar feels that they need to try and find you off by starting to by other people's battles for them shows that they don't have a lot of confidence in what they are saying anyway. If you are in breach of other people's trademarks, wait till you see those letters and then come back to us.

 

A final warning – trademark lawyers will often exercise huge pressure even if they have no real chance of success and most trademark battles are settled on the basis of who blinked first. Trademark battles are very costly win or lose – but especially lose.

[Kraken1]

the 2012 stuff is restricted, but providing you are ok with that, i.e. you have permission, then you might be on reasonable grounds.

[Nurselayer]

Thank you. My friend does have permission to use the words "London 2012" in his stuff from LOCOG and in fact they have been very supportive of him.

 

I didn't think that "Inside" should be a valid trademark so I really appreciate your help on this. I shall draft a letter for him to reply this afternoon.

 

Many thanks for you help

[hhyc123]

i have a friend who used to own a company renting cars in thailand ,i know its a diferent country but could be relivent,his co was called virgin car hire ,and you know who contacted him and tried to get him to stop using that name,they did not want to have people think they were being misled ,he had been trading for years with this name,he told them where to go,a few months latter they agreed to pay him to stop,it was a decent offer to him ,which he accepted ,might be a idea

Edited September 17, 2011 by hhyc123
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