Internet Trademark Infringement

[bubba450]

I have operated a web site for over four years now that specializes in one specific discipline of education. Recently I received a scare email from a company previously unknown to me that demands I take down the site because they have registered a trademark for an alphabetically similar name. For the sake of anonymity (not the real site name) my site name would be something like:

arteducation.ext

The trademark holder has registered:

educkation.ext

The difference is in several places. First they have changed a single letter, from "C" to a "K". Lastly their domain uses one less word, removing the term "art" as shown in the example.

The registration and use of my site name precedes the registration of their domain by over two years and although their name has been registered that long they are only now attempting to enforce the trademark. My hunch is that they discovered my site by typing in their domain into Google and discovering that mine ranks first

I see no real correlation between our two web sites. Also they appear to be a video oriented site where I am focused on text articles and educational resources.

Do I need to fear this at all?

Does the fact that my name has been used for years prior to their registration of the trademark mean anything?

Many thanks for any advice you might be able to provide.

-Bubba450

 

[SandraMSovin]

It seems that there may be a couple of things in your favor. First, if the "example" marks that you presented are representative of the real marks, descriptiveness may be a relevant consideration. Briefly, (there's more to it) a descriptive mark generally has less breadth of enforceable rights relative to a fanciful or arbitrary mark. Second, if your use preceded their use and/or registration, than you may have established some common law rights. You do need to have some legal advice, however, before you ignore the letter. You should be able to have a lawyer check out your situation and write a letter of reply on your behalf without spending too much. If you don't respond and, right or wrong, the other party files suit, you'll be facing a much more costly and complicated situation, even if you ultimately prevail.