CTT's Second Letter

Dear Mr. Callender:

We have reviewed your letter of April 9, 1997 and are somewhat dismayed by your lack of understanding. Our letter of March 26, 1997 clearly states in its first paragraph:

Since at least 1994, CTT has been in the business of creating and disseminating parody publications under the trademark designation "LIES."

Your December 1995 registration of the domain name "lies.com" is clearly subsequent to CTT's initial use of "LIES." Furthermore, as noted in the March 26, 1997 letter, the United States Patent and Trademark Office (hereinafter "USPTO") has indicated that CTT's application for the mark "LIES" for parody publications is in condition for allowance. This application was filed with the USPTO on March 21, 1995, also prior to your stated registration and/or use of "lies.com."

The reason for your failure to discover these facts before your registration of "lies.com" is not legally relevant to our concerns. The fact remains that, since your registration of "lies.com," you have violated, and are violating, CTT's federal and common law trademark rights in the mark "LIES" with respect to parody publications, notwithstanding your subjective good faith beliefs.

Additionally, your belief that there could be no public confusion between CTT's mark and your domain name is equally irrelevant. The proper legal standard is "likelihood of confusion," not subjective belief of confusion. Lone Star Steakhouse & Saloon v. Alpha of Va., Inc., 43 F.3d 922, 933 (4th Cir. 1995); Cardservice Int'l, Inc. V. McGee, 950 F. Supp. 737, 740 (E.D. Va. 1997). The factors utilized for a determination of whether there is a likelihood of confusion are:

1. the strength and distinctiveness of the mark;
   
2. the similarity of the two marks;
3. the similarity of the goods/services the marks identify;
4. the similarity of the facilities the two parties use in their businesses;
5. the similarity of the advertising used by the two parties;
6. the violator's intent; and
7. actual confusion.

An analysis of these factors favors CTT. The fact that CTT has been awarded the trademark "LIES" means that it should not be forced to compete with others who would utilize its hard-earned good will by use of the word "LIES." See Cardservice, 950 F. Supp. at 741. Demonstration of actual confusion is not necessary for a finding of likelihood of confusion. Lone Star, 43 F.3d at 933; Pizzeria Uno, 747 F.2d at 1527.

Unauthorized use of a domain name which includes a protected trademark is in direct conflict with federal trademark law. Cardservice, 950 F. Supp. at 741-42; Panavision Int'l, L.P. v. Toeppen, 945 F. Supp. 1296, 1302 (C.D. Cal. 1996); The Comp Examiner Agency, Inc. V. Juris, Inc., No. 96-0213-WMB (CTx), 1996 U.S. Dist. LEXIS 20259 (C.D. Cal. 1996); Hasbro, Inc. V. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d 1479 (W.D. Wash. 1996). This should be sufficient "legal authority" for you to make an informed decision in this matter.

Be advised that, if you continue to utilize the terminology, trademark, and/or designation "LIES," you will be willfully and intentionally violating CTT's trademark rights and will be liable for increased penalties as a result. Our initial letter to you, dated March 26, 1997, was adequate notice for you to investigate your position in this matter (with the aid of an attorney). Though not our duty, we have provided you with the above analysis to assist you.

We are hopeful that you will now conform your conduct, as the law dictates, so that we will not be forced to take active measures in protecting CTT's intellectual property rights. We ask that you (or your attorney) contact us in writing immediately to confirm your intentions to do so.

Very truly yours,

FAY, SHARPE, BEALL, FAGAN, MINNICH & McKEE

Richard M. Klien
Attorney for Creative Think Tank, Inc.

RMK/cmc
cc: George L. Rafter