Trademark Infringement for 2 words

[kisxena]

Hello:

Last year I purchased a domain that started with sherides....com. As of today, I have not launched the website. Waiting on my trademark filing.

On 9/6/09 I received an email from she-rides dot com. This is the email:

Please let us know how you intend to use this site (sheridesherown dot com). Selling any motorcycle, scooter or motorsports related product will infringe on our copyright.

Thanks,
She Rides

--
She Rides Customer Service

she-rides dot com website
Quality motorcycle and scooter gear for both women and men!

***************************************************

I responded back with:

Hello:

Sorry for not getting back to you sooner.

My proposed website is more of a portal for women riders focusing on the new rider, providing them with a starter pack of info, a DVD of my recent trip to Memphis last year called 20 Wheels to Memphis as well as other valuable information. The DVD is a very empowering and motivational documentary. The site will also provide women riders to publish and manage their own stories, road trip adventures, etc.

The only merchandise I will market are those labeled with the xxxxx "x" logo & phrase such as caps and t-shirts. I will not be selling motorcycle merchandise as your site does.

My site will also list and advertise local and online merchants who specifically cater to women motorcyclists.

I hope this has clarified any issues you may have with my intended purpose.

Thanks

*******************************************************

Did not receive an email reply. Instead, I picked up a certified letter (11/21/09) today from their lawyer claiming that I'm infringing on their name and that they have rights for the words She Rides. They provided me an Agreement letter to sign so that I would relinquish the website domain as well as the use of my website name and to cancel my Trademark filing.

I'm just a female rider that wanted to create a community website for female motorcyclists to share their stories. I'm not selling motorcycle accessories. If I sold anything, it would be hats & t-shirts with the websites name and logo.

They claim that their store is specific to women. I looked at their site in September and it was then called, She Rides and He Rides Too! They have since removed the ...and He Rides Too! They are nothing but a standard motorcycle accessory store. They aren't special by any means.

There are other domains out there and running: sherides dot net, sheride dot com, sheridesabeemer dot com.

My domain is sheridesherown dot com. I also created a logo with the letter S.

Do they own all phrases that start with She Rides?

What legal leg do I have to stand on? I don't have the thousands of dollars to hire a lawyer. I don't like being bullied!

Please advise

 

[Michael Wechsler]

If the person wrote to you saying that your domain violates that person's "copyright" - my guess is they don't know what they are talking about. The issue would be trademark. If they don't have a federal trademark (you can search at the uspto.gov) then much of this may be just blowing smoke. My hunch is that your guess is probably on the right track.

 

[lwslw]

I would tend to agree, it sounds like they may be blowing smoke. Any updates on this?

 

[tpajet]

I was starting an online business last year (didn't get off the gorund for several reasons). I can't recall right off the office for this, but what was stated was that you don't have to file for an official trademark, but it can help in court. But if you have been using that name in commerce, then you automatically hold the trademark. However, you can't enforce that trademark if the other person is using for different goods.

So for example Delta Airlines can't sue Delta Faucet or Delta Saw, because each are in a different business.

However, in the case of the OP, she is using essentially the same name in the same business, so it would not work. Keep in mind too, that the other business may be jut liker her - a one person operation, or very small business, so using the term trademark or copyright doesn't mean the person is way off base. Yes it's true that the wrong term was used, but that would quickly get corrected in a legal filing.