Trademark - Help and Info [Archive]

Berubeland

2011-03-18, 10:24 PM

Well I have learned something in the last few days. Even if you register a business all you do is create an entity that can pay taxes.

So I registered my business in 2007 and bought my website a few months later. The .com domain was parked and quite expensive so I didn't buy it.

So anyways earlier this year someone bought the landlordrescue.com domain then they proceeded to trademark Landlord Rescue in Canada. Of course not knowing about trademarks, I failed to trademark Landlord Rescue.

From what I understand once they go through with the trademark they can prevent me from using my own company name and website in Canada. So I have to fight them.

So if you have a company name you like spend the lousy $250 to go trademark your name...

But possible the worst thing about the whole ordeal is that the company who stole my name are pretty sleazy... I get phone calls from landlords on a regular basis that are serving them with legal papers. Today I got an email from a tenant who was looking for them because they hadn't returned his security deposit after he left the place. Last week was a property manager looking to turn over her portfolio of houses.

So I have learned to respect the brain trust that is canadian money forum. Anyone know anything about this?

m3s

2011-03-18, 11:21 PM

It's called cyber-squatting or something and it was a hot market back in the 90's before companies saw any potential in the cyberwebs. Some ingenious nerds got the idea to register all the big names they could at $100 a pop, and sell them for $1,000,000's

The real benefit of registering a business imo is that it becomes a legal entity. Thus taking any liability for its questionable actions. When held accountable, it can simply claim bankruptcy and its members change the name and start over. A real gem of this system

m3s

2011-03-18, 11:53 PM

Berubeland

2011-03-19, 01:45 AM

It's not that's it lucrative in and of itself, I don't even have any ads up that I get paid for. Its the least expensive form of advertising I've ever used and it works.

If only it were just the name... I'd change it but my site has been around for a while and I have written several books worth of blog posts on it, many of them with backlinks. I have over 16000 backlinks right now and that is what is worth the money and the page rank.

The dude has even stolen my life preserver logo and made it better but it's still my idea. Plus it isn't cheap to change all my information over.

kcowan

2011-03-19, 09:58 AM

I would do two things:
1) Find out when they got the TM. If you were using it first, you have a case. Also check the jurisdiction, e.g. if they have Ontario, you could go for Canada. There are many businesses that operate in different provinces under the same name but are not related.
2) Capitalize on the calls by saying that you will handle their business better than the shody namesake. IOW make some lemonade.

Also there is a difference between a trademark and a service mark. You need the latter.

heyjude

2011-03-19, 11:38 PM

Let's get this straight. Your business, which was established first, is called Landlord Rescue, right?

When you registered it, did you conduct a federal NUANS search to see if anyone else was using the name? Is your business registered in your home province, or federally? Is it incorporated?

What has this other company done? Check here:

http://www.corporationcentre.ca/docen/pns/home.asp

They should not have been allowed to register a business with the same name as yours, unless each of your businesses is registered in a different province. You might have a legal case against them.

Berubeland

2011-03-20, 06:46 PM

Well I also thought this was the case... I was wrong. Creating a business name is different than trademarking. Only the trademark protects your name and logo.

http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/vwTrdmrk.do;jsessionid=00011oyY16-0NB369a90zLzRxs-:-485M5F?lang=eng&status=&fileNumber=1498820&extension=0&startingDocumentIndexOnPage=1

This is the link to the search, had one of my readers not noticed the TM mark after their name on their website and had me look into it I might have gone beyond the time to oppose the trademark against the name. I then would have received a lawyer's letter telling me to cease using the trademark property.

Now I have to get a lawyer to fight it. Nice... plus they are shady operators and even this Friday I got an email from a tenant who had not received their money back. I get calls from owners that have been ripped off and want to serve legal documents.

If you go to their website... which has recently been put up they've even stolen my house in a life preserver logo. Which as we all know you guys helped pick months ago...

www.landlordrescue.com

Four Pillars

2011-03-21, 10:14 AM

I can't speak for the legal side of things, but I would consider:

1) Doing nothing. Ignore the emails or send them a canned response "I'm not that Landlord Rescue". Ignore them completely.

You have your own business/brand and until they try to enforce their trademark, you don't have anything to worry about.

2) If you have to - it's not a big deal to switch to a new domain. You can do redirects which will forward all the 'Google juice' to the new domain. It wouldn't be too expensive to get Scott to do this.

How about landlordsaviour.com? ;)

GeniusBoy27

2011-03-21, 10:40 AM

sags

2011-03-21, 03:29 PM

I did a research on whois to see who the owner of the .com website is, and found this listing:

Rua Dr. Brito Camara, n 20, 1
Funchal, Madeira 9000-039
PT

I did a Google search of the name, and it shows an array of scam websites, including everything from fake loans to phising accusations, attached to that name.

The information is probably fake.

They have registered the domain name until 2019.

You can file a WIPO action to claim the domain name. It probably would not be difficult to have WIPO declare the registration invalid, and award the domain to you.

Your best bet is to join a domain name forum and ask for help there. Those guys are the experts on domain names, and there are some intellectual lawyers on the forum as well.

I would suggest Domain Name Forum or NamePros as two forums to join. (free)

I will do some digging into trademarks etc, but if they are scammers from another country, it is unlikely they would respect a trademark anyways.

Your website ranks in the first 4 domain names on Google, and your 2nd and 3rd entries direct to your warning page. I would put a warning on every page of your blog so that Google picks it up. The idea is to drive the .com off the first page.

sags

2011-03-21, 03:40 PM

Berubeland

2011-03-21, 05:33 PM

Oh boy I am finding out more than I ever wanted to know about intellectual property law...

The problem as usual is money and if money was no object I could really make their life miserable.

I did contact a lawyer and they want $7000 before they even breathe on my paper work.

Still I am so lucky because actually Marina noticed the TM and I still can oppose the trademark as soon as it is published. Just the application is $750.

I have a very good case that is not the issue, but without being able to throw wads and wads of cash at it... it's not good.

I also found out about Rules for Uniform Domain Registration Policy, which can strip them of their domain name.

And I'll be looking into WIPO as well thanks :D

So I do have some protection as a common law trademark and but believe me if you are in business get yourself trademarked and don't fool around. Everyone I talk to seems to think the registering the name means something and they can't believe someone could do it.

Also interestingly enough... the person claims on their website they have 100 properties if anyone remembers this reference. Also a valued and ethical member of REIN.

As usual thanks for the help guys, my dad's friend says that in such cases a good defence is a solid offense so I'll be doing my best to open a can of whup ass from as many different directions as possible.

Berubeland

2011-03-21, 05:40 PM

Further Google searches reveal that the registrant is involved in a whole lot of sketchy websites and there are accusations of fraud etc.

It was suggested on one forum that it is stemming from Iran.

If that is the case, intellectual property means nothing to them.

I would put paste the owner address on your website in your warning to others. Just paste it in and link to a google search:

Rua Dr. Brito Camara, n 20, 1
Funchal, Madeira 9000-039
PT

Of course it's involved in a bunch of sketchy websites its a domain registrar anonymizer so no one can easily find them I think. Weird that a legitimate business would use such a thing. It's bizarre.

Dana

2011-03-21, 05:52 PM

Ewww. This gives me the heebeejeebee's. It sounds like they are trying to do more than steal your name and trademark, they are trying to benefit from your good reputation and following. To me, that is a form of identity theft and should be illegal - though I have no idea if it is.

Have you contacted them as a potential client? Do they represent themselves as actually being you?

Creepy.

Dana

2011-03-21, 05:58 PM

It seems this guy has been in property management for a while. Here (http://www.jpmanagement.ca/) is a link to his other website which looks very identical to the new website except the new site has your company name and eerily-similar logo.

He has videos on youtube about property management dating back to January 2009. It seems he is a former NHLer from Alberta.

I hope you get your name back.

Berubeland

2011-03-21, 07:08 PM

Yeah it's just bizarre and falls under the I don't need this sh$t category :o honestly I have real issues to deal with like growing my business until I'm filthy rich.

I have just contacted a professor of law in trademark and domain name infringements and threw myself on his mercy perhaps he and his students can help with this.

kcowan

2011-03-22, 11:13 AM

BTW putting a TM after the name is used during the application process. It gets serious when granted and the circle R is used. I think a letter to the authorities would help prohibit the granting of the mark. Just prove that you have a legitimate claim to the name. A cease and desist letter to the perps would also help your case as you are acting to protect your business.

Changing your name will not prevent them from doing the same thing with your new name...

humble_pie

2011-03-22, 12:11 PM

... He has videos on youtube about property management dating back to January 2009. It seems he is a former NHLer from Alberta.

this is electrifying information imho. An nhl star doing this to a hardworking legitimate small business owner ?? unbelievable.

but if it's true, perhaps he could be shamed out. Several people putting pressure on the nhl might help here. Find out his church, his community, etc. Go for him. Plus the media would love stories like this.

last thought: any chance this guy could be what's-his-face who trolled after berubeland here in this forum a while ago.

Four Pillars

2011-03-22, 01:56 PM

Dana

2011-03-22, 02:07 PM

I don't anywhere on that site any ownership info that identifies a former nhl player.

You should get in touch with the guy, but keep in mind that his identity could have been stolen or site hacked. Don't automatically assume he's the bad guy.

You are right, just because it's his picture and name are on the website, doesn't mean he knows someone is using his likeness.

His name and photo are on the website. I googled him and found the youtube videos and NHL info.

Maybe he owns the company that owns the website?

humble_pie

2011-03-22, 02:30 PM

pillars is right. Have to proceed extremely cautiously here. Any party able to hijack a website can vilify anybody on any website.

i did say "but if it's true ..."

imho nothing should be said in public yet. Situation is like a reporter carefully building his story. Every detail of the case has to be checked out & backed up (part of the reason why we need bylined professional journos, not just blogs & tweets.)

as matter of fact folks w insights here who want to help berubeland might even take to PMing her instead of publishing on the forum, if she wishes.

Four Pillars

2011-03-22, 02:40 PM

FYI - He's no NHL player - played in the WHL for a few years. I'm sure he's a superior hockey player to myself. :)

The WHL is the western hockey league - junior hockey.

He got drafted by the Leafs, which was probably the kiss of death....

Berubeland

2011-03-23, 12:47 AM

Well I thought that other small business owners might benefit from situation. Most of us that are bootstrapping businesses learn from our mistakes. In this case you can learn from mine :) it's cheaper

If you haven't trademarked your stuff do so ASAP if you value it. It took me quite a while to come up with my business name the first time.

Before a few days ago I had no clue.

I'm learning a whole new area of law, which is always interesting.

Berubeland

2011-03-28, 03:13 PM

Larry did a story on what's going on with these name hijackers.

http://www.canadianbusiness.com/columnists/larry_macdonald/article.jsp?content=20110324_160334_8700

And my much more opinionated version of events can be found below.

http://landlordrescue.ca/landlord-rescue/

Plus I'm going to get the help of my MP who will find out how this could even happen in the first place...

I'd really appreciate any bloggers who might want to spread the word as well or any good ideas about how to bring the fight to them rather than fight in their court.

marina628

2011-03-29, 09:52 AM

I would take the direct approach and send an email to the .com people and tell them you have been advised of their application and that you plan to appeal it .I would also draw attention to the things they are 'borrowed' from you.When they realize your position they may not bother .It does no good to threaten them as if they have deeper pockets they could take the position they filed first .I have paid many times over to register trademarks for my more profitable website domain names ,you(Everyone reading this) have to consider what happens if they get the trademark which would then mean you violate their trademark.Could you afford to lose your revenue from the website?

I have been on both sides of the fence , we registered a trademark in Canada in 2007 which was a domain we bought from a guy in UK .A guy in Portugal owns the .es version and came to us threatening if we wont give up the .com .He is not trademark in Portugal or anywhere but bought .es in 2006 before the .com and .co.uk was bought by the guy in UK.Technically same situation as Rachelle has now but LEGALLY we have the trademark and probably could try to get his .es .We responded with our trademark letter and our intent to fight if he tried to get the .com.We obviously did not look up all the country domains when we filed as we are doing business in English speaking market.
Trademarks cost a fee but it is the cost of doing business and you run the risk to the rights of your business name if you don't do this.If i were Rachelle I would not wait until this trademark is issued to appeal ,it would make more sense to advise the Parties of the conflict now.Just my opinion but saying the fees are expensive and using that as an excuse not to apply for trademark probably won't win you the right to the name.Common sense does not apply ,you having name first does not always guarantee you rights to the name.

explorer416

2011-06-02, 01:15 PM

I just noticed that the stolen & modified logo that was on that phony site (which I see has since been changed) was used as a picture accompanying an article in the Toronto Star today:
http://www.moneyville.ca/article/1001291--when-rates-rise-which-mortgage-is-best

The photo credit is listed as Shutterstock.

MoneyGal

2011-06-02, 01:38 PM

:confused: Unless you purchase a (very very expensive) exclusive license to use a stock photography image, anyone can use it.

carverman

2011-06-02, 07:36 PM

I'm no expert on the legality of it but you may have a dispute based on intellectual property if you can prove you came up with it first

I think it would be easier to change the name myself. I must be missing something with all these lucrative incorporated blogs

No, I don't think so. Registering a domain name is NOT the same as registering
a business trademark in Canada..or the US for that matter.

You can grab a domain name and hang onto it..and someone else can grab
it after a specific period of time..that she would have to research.
As far as any legal protection.unless you get domain name from GODADDY.com or similar, she may be SOL for any recourse.

If she had trademarked her business as "somethingsomething.com" and
linked that to the website ..she probably could have some legal recourse
a legal letter or something more...(expensive, I might add to go after the new absconders of the domain name), but they might have to back off if she
threatened to sue them as it was already an established business.

http://www.corporationcentre.ca/docen/ptm/home.asp

carverman

2011-06-02, 07:42 PM

Trademarks cost a fee but it is the cost of doing business and you run the risk to the rights of your business name if you don't do this.If i were Rachelle I would not wait until this trademark is issued to appeal ,it would make more sense to advise the Parties of the conflict now.Just my opinion but saying the fees are expensive and using that as an excuse not to apply for trademark probably won't win you the right to the name.Common sense does not apply ,you having name first does not always guarantee you rights to the name.

The way, I understand it, if you are using a catchy domain name that anyone
can use and you want to make a business out of it..(or reserve it so nobody
else can grab it), you better spend the money and incorporate yourself and
get the trademark legally registered...otherwise, the little money you may
save up front by NOT doing it as soon as you can..is a lot of legal hassle
and expense to recover it LATER on..and it may left up to a court to decide who
has the right to it.

Just look at the patent law suits and you can appreciate what's involved.

carverman

2011-06-02, 07:55 PM

My wife, who's a corporate lawyer says this:

1) Write a Cease and Desist letter to them, if you want them to stop using Landlord Rescue
2) If not, you could take this to court, but you have to prove the following:
a) You were first.
b) You have to prove the people recognize you were first, and that you were providing an important service, and
c) Explain why you didn't register the trademark.
3) So it depends on how much you value your trademark, and if you are willing to pay a lawyer for that cost. Trademark is a federal jurisdiction, not provincial. It may be easier to do what Mike says above.

Yes. There was a case a few years ago with my former employer
(Bell-Northern Research) aka BNR (logo). A company operating in Ontario
had the same logo ,but they were a equipment rental limited company.
Needless to say Bell-Northern legal dept went after them to cease and
desist using the BNR logo..but because they were already an established
BUT different line of business...they were allowed to use the name/logo.