Zero to 100 and back - as 60mph is for slow folks.. :P

[RC45]

Well guys, one year after first started using the name Zero to 60

http://www.motorworld.net/forum/show...light=cadillac

(a fully researched and non-competing name at the time) we have received a threat of litigation from some guys called Harris Publications Inc. from New York (they have a Madison Avenue Lawyer in their corner)

They claim since they registered 0-60 in may 2006 for use on some "upcoming project" that the name Zero to 60 is too close to theirs so we have to change names or stop publishing.

I guess we need to give up the 0-60.us website since they have the name 0-60... but surely not our name?

Or do you think there is nothing in a name?

[ZfrkS62]

I would just go against them. If you have everything in order that proves you were using the name first, then you should by no means give into their big company pressure.

[dutchmasterflex]

Man what a bummer.

Don't these guy's have anything better to do? Surely you aren't doing any harm to their business with your online magazine..

[RC45]

There is no argument - they have 0-60 registered and its theirs to use all they want - their only argument is that since the website went live September 2006 and they filed 0-60 in May that Zero to 60 is too close to 0-60 for commercial comfort.

[Erez]

too bad they have it registered and not you guys.. keep the site.. fuck them, the site is yours and they can do shit about it..

[ZfrkS62]

Originally Posted by RC45 There is no argument - they have 0-60 registered and its theirs to use all they want - their only argument is that since the website went live September 2006 and they filed 0-60 in May that Zero to 60 is too close to 0-60 for commercial comfort.

but didn't your publication go into use before they did anything with theirs? Doesn't that give you more credibility?

Worse comes to worse, you could always change it to Naught to 60

[sameerrao]

naughty to 60?

[RC45]

We have no stake on 0-60 and dont want any - their argument is that Zero to 60 is too close to their name and will cause confusin int he market place because we are both car related magazines.

This is like Coca Cola trying to close down Pepsi Cola...

[666fast]

Since you gusy got the domain name first, can you sell it to them for a healthy profit? LOL

[RC45]

Originally Posted by Ronin005 I say dont let them scare ya and tell them nicely to fuck off, or make a proposal to them and they can buy it from you if they wish!!

Nice idea

[black_magician]

I agree with Ronin. You guys aren't competing against each other, so tell em to F-off.

[Minacious]

Close is just that and nothing more. I personally think they have no case. They use a number and you spell out the word. You are two completely different entities.

[novass]

Thats pretty shitty. When you say they registered the name before you, what exactly do you mean? With a business bureau or what?

[Shinigami]

RC

You might actually be able to win this one. I spoke with the trademarks expert at my company and he conducted a quick search of the filed trademark. He has this to say:

In principle a trademark for which a mere application has been filed on a 1B basis (that is ITU application basis or Intent To Use) that means that the mark is not registered and NOT USED yet – the applicant for this mark cannot bring an action for trademark infringement before it starts using the mark. The best way to overcome an action from the applicant is to bring evidence that the user of the unregistered mark intended to use the mark before the applicant filed an application. Another way to stop the applicant from claiming rights is to argue that the applicant filed a mal fide application by showing that the applicant likely knew about the fact that the user of the unregistered trademark intended to use this mark before the application was filed. This would enable the user of the unregistered trademark to invalidate the application and file an application for the same. Finally, one shall always file an application after conducting full availability searches in connection with a mark that he or she intends to use eventually so as to avoid this situation.

And here's the query for the trademark:

United States Patent and Trademark Office Trademarks > Trademark Electronic Search System(Tess) TESS was last updated on Tue Oct 24 04:19:23 EDT 2006 List At: OR to record: Record 1 out of 6 -------------------------------------------------------------------------------- Word Mark 0-60 Goods and Services IC 016. US 002 005 022 023 029 037 038 050. G & S: Magazines featuring featuring information and news in the field of automobiles Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Design Search Code Serial Number 78894466 Filing Date May 26, 2006 Current Filing Basis 1B Original Filing Basis 1B Owner (APPLICANT) Harris Publications, Inc. CORPORATION NEW YORK 1115 Broadway New York NEW YORK 10010 Attorney of Record Oliver R. Chernin Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

[ZfrkS62]

so in essence, RC has the right to use this name because his is actually in use, and there is proof they were working on this before Harris filed for their trademark?