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April 27, 1997|
Dear Mr. Klein:
Thank you for your prompt response to my letter of April 9, 1997. As I stated in that letter, I have no desire to infringe upon your client's legitimate trademark rights. Notwithstanding the information you have presented, I do not believe any infringement has taken place.
I will be happy to work with you and your client in order to satisfy you that no infringement or confusion has occurred, or is likely to occur, as a result of my continued operation of the lies.com Web site. I am equally willing, in the event you can demonstrate that your claims have merit, to take whatever steps are necessary to ensure that I do not infringe upon your client's mark.
As an initial matter, you did not respond to my previous letter's request that you provide me any evidence you have of actual confusion between your client's magazine and my Web site. In addition, there are some other specific pieces of information that I have been unable to obtain, and that would help me determine my future course of action. I hope I can count on your and your client's cooperation in obtaining this information.
Besides any evidence of actual confusion, I would be very interested in learning the date on which your client first published his magazine under the sole designation "Lies." In your initial letter you indicated that your client has been doing so "since at least 1994," and "has obtained recognition in the trade" in the time since then. Despite diligent efforts on my part, however, I have been unable to find any evidence supporting that assertion.
As I previously told you, I performed an extensive search in December 1995 for entities using the designation "lies," and found no mention of your client's magazine. Although a similar online search last month did turn up one reference to a product called "Lies: The Truth About Washington D.C.," which the listing indicated was published semi-annually by CTT, Inc. for a consumer audience, the listing included no other information about the product. Specifically, it did not refer to the magazine by the sole designation "Lies," and did not provide any information on when it was first published. In addition, I have been unable to find your client's magazine at any of several local newsstands I have recently visited, and the reference librarian at the main branch of the Santa Barbara County Public Library was unable to find any listing of it in the standard periodical guides. I have worked in the magazine industry myself for more than ten years, and no one I know has ever heard of it.
I note that your client filed a trademark application for the designation "Lies" on March 21, 1995, with the application having been published for opposition on January 2, 1996. In reviewing that application, however, I discovered something you failed to indicate in your recent letter: It was an "intent-to-use" filing. Quoting from the USPTO publication, "Basic Facts about Registering a Trademark":
An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an 'intent-to-use' application)... If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark...
It would appear from this that your client had not yet used the mark in commerce at the time of the March 21, 1995, filing. How do you reconcile this with your statement that the mark was in use as early as 1994? Your recent letter implied that the March 21, 1995 filing showed that the mark was in commercial use prior to that date. In fact, when one takes into account the "intent-to-use" nature of the filing, it shows just the opposite. How do you explain your omission of this crucial fact?
Presumably your client will need to submit evidence to USPTO that he has begun to use the mark before the trademark registration can be completed. At the time that evidence is submitted, I would very much appreciate it if you would forward a copy of it to me.
Despite my best efforts, therefore, I have yet to find any evidence that your client used the designation "Lies" to represent his product prior to my creation of the lies.com Web site. If your client really has been publishing a magazine under the name "Lies" since 1994, it should be a simple matter for you to provide me such evidence. For example, you could tell me how I can buy a printed back issue of the magazine with an issue date prior to December 1995. I would be happy to pay a reasonable fee to obtain such a back issue.
Obviously, if your client's first use of the designation "Lies" came after the creation of my Web site, he possesses no prior trademark rights to the name. Let us assume, however, that you will be able to present me with evidence supporting your claim of prior use. Even in that case, I still do not believe there is any likelihood of confusion between your client's product and my Web site.
In your most recent letter you gave a list of the elements that are used in trademark law to determine the likelihood of confusion between a plaintiff's mark and a defendant's goods or services. You state that an analysis of these factors "favors CTT," yet I cannot see how you arrive at that conclusion. You list seven points to be considered; I will treat them individually:
1) Strength and distinctiveness of the mark: The term "lies" used by itself hardly seems distinctive when used in connection with descriptions of Washington politics (which I gather is the subject matter of your client's magazine); I would think the term represents a descriptive mark that would be protectable only through the acquisition over time of secondary meaning. As to the strength of the mark, again, I find it hard to believe your client has obtained wide recognition for it, given the extreme paucity of references to it in the online literature, and the complete absence of references to it anywhere else.
2) Similarity of the two marks: As I stated in my previous letter, I have never referred to my Web site as "Lies" or "Lies Magazine," but only by its unique domain name, "lies.com". In that the only independent reference to your client's product I have been able to find refers to it as "Lies: The Truth About Washington D.C.," it appears that there is very little similarity between the two marks. If, however, you can provide evidence that your client has in fact been using the sole designation of "LIES" to refer to his product, I will revise my position, and acknowledge that the marks are, in fact, inherently similar. Again, this point could be easily cleared up if you or your client would provide me with information on how I could purchase a copy of the magazine.
3) Similarity of the goods/services: Again, I'm hampered in my assessment by the fact that, despite extensive searching, I've been unable to find any information regarding the content of your client's magazine. You, on the other hand, are fully acquainted with the content of my Web site, since it is freely and instantly available throughout the world via the Internet. In that my Web site was created without any knowledge of your client's product, it is unlikely that there would be any substantial similarity between the two, but I will defer judgment on this point until I have seen your client's product. Further, I will make the following offer: If an objective assessment supports the conclusion that there is substantial similarity between the two entities, and if the similar content in your client's magazine appeared prior to its appearance on my Web site, I will immediately and permanently remove the content in question, and alter my site to eliminate any potential for confusion. If you have any evidence of substantial similarity between my Web site and your client's magazine, please provide it to me as soon as possible so that I can take appropriate action.
4) Similarity of the facilities the two parties use in their business: Here it is clear that there is no likelihood of confusion. Your client publishes a printed magazine, and has no presence on the Internet. (I note that your client's trademark application is limited to Class 16, "Paper Goods and Printed Matter," and specifically describes his product as a "printed parody magazine.") I maintain a Web site on the Internet, and have never published that Web site's content in printed form.
5) Similarity of the advertising used by the two parties: Here, again, you will have to agree that there is no likelihood of confusion. I have never advertised the existence of my Web site anywhere except on the Internet, where extensive searching reveals no advertising of your client's product. Also, in my online promotion of my Web site, I have never referred to it as "Lies," "Lies Magazine," or as any kind of magazine, but only as "lies.com," a Web site.
6) Defendant's good faith in adopting the mark: I've already detailed the steps I took to ensure that my Web site did not, and does not, infringe the legitimate trademark rights of any other party. My extensive searching for other entities with similar designations prior to registering the domain name "lies.com," and my demonstrated willingness to work with you and your client to ensure that there is no possibility of public confusion, testifies to that good faith. I am gratified to see in your latest letter a reference to my "subjective good faith beliefs," an indication that you acknowledge my good faith in this matter.
7) Evidence of actual confusion: In my previous letter I asked you to provide me any evidence you have of actual confusion. Your failure to do so, and your claim that actual confusion need not be demonstrated for a finding of likelihood of confusion, seems a clear acknowledgment on your part that there has been no actual confusion.
So, of the seven factors that you stated are used to determine likelihood of confusion, four of them (#4, 5, 6 and 7) clearly support my position. With factor #3 (similarity of the goods the marks identify), the possibility of confusion seems unlikely, but despite that, I have offered to immediately alter my Web site to eliminate the potential for confusion if such potential can be demonstrated. With respect to the remaining two points (strength and distinctiveness of the mark and similarity of the two marks), you have yet to provide any evidence supporting your claims, while the independent evidence I have been able to obtain all indicates that those claims are without merit. Besides the specific evidence I have already asked for, if you have any other evidence that supports your claim that there is a likelihood of public confusion, please provide it to me.
There are a few other points in your April 14 letter that I have questions about. One of them is the current status of your client's application for federal trademark protection. You state repeatedly that the US Patent and Trademark Office has indicated that "CTT's application for the mark 'LIES' for parody publications is in condition for allowance." Presumably this is not the same thing as your client actually having received a federal trademark, and yet your letter seems to indicate that your client has already done so. For example, at one point you state that I "have violated, and are violating, CTT's federal and common law trademark rights."
Later, you state unequivocally that your client has been awarded a federal trademark, saying, "The fact that CTT has been awarded the trademark 'LIES'..." Is it true your client has already been awarded a federal trademark? If so, please provide me a copy of the federal trademark registration. If not, please explain your use of this language.
The remaining point I would like clarification on concerns just what it is that your client is seeking. Much of your communication with me concerns your unsupported assertions that there is a likelihood of public confusion between your client's magazine and my Web site, and that my site constitutes a violation of your client's rights to use the designation "LIES" in conjunction with "parody publications." As I previously stated in my initial telephone conversation with your client, however, my Web site contains a wide variety of material, only some of which might be construed as "parody". For example, my site features an extensive set of pages where amateur astronomers share observing notes with each other (see http://www.lies.com/aaol/). Other pages on the site deal with such topics as finding a reliable Internet provider (http://www.lies.com/feb96/021496.html) or the risks inherent in the space shuttle program (http://www.lies.com/mar96/031896.html), without any use of parody. Leaving aside for the moment the question of whether or not you are challenging my right to present parody on my Web site, are you also challenging my right to present non-parody material under the domain name "lies.com"?
In my initial telephone conversation with your client, he told me that regardless of the type of material contained on my Web site, and regardless of whether or not there was a risk of public confusion between his creation and my own, he believed that his federal trademark registration of the term "LIES" gave him the right to use the domain name "lies.com." Is that, in fact, the claim you are making?
In responding to my request for legal authority supporting your position, you referred me to four separate cases dealing with the relationship between trademarks and domain names. In reviewing the decisions in those four cases, though, not one of them appears to support your position.
In "Cardservice Int'l, Inc. v. McGee" (involving a dispute over the cardservice.com domain name and the "Cardservice" trademark), the trademark in question was a highly distinctive coined word, which the defendant knew to have been previously registered as a federal trademark when he secured the cardservice.com domain name. In addition, the defendant used the domain name to offer a credit card service substantially similar to the service provided by the plaintiff, creating a great likelihood of public confusion. On all the substantive points of this case (the prior registration, the defendant's foreknowledge of that registration, the distinctiveness of the mark and the likelihood of public confusion), the matter between your client and myself is entirely different, with all those differences tending to support my position, rather than your client's.
In the case of "Panavision Int'l, L.P. v. Toeppen" (involving the domain names panavision.com and panaflex.com), the defendant made no legitimate attempt to use the domain names in question, and indeed, appears to have registered the highly distinctive and previously registered marks as domain names only so he could demand payment from the trademark owner in order to relinquish them. Again, there can be no valid comparison with the case between your client and myself.
In "The Comp Examiner Agency, Inc. v. Juris, Inc." (involving the juris.com domain name), as with cardservice.com, there was a previously registered trademark, with the defendant using the domain name to offer substantially similar goods and services to those of the plaintiff, creating a significant risk of public confusion. Again, the case clearly does not support your position in the matter between your client and myself.
In "Hasbro, Inc. v. Internet Entertainment Group, Ltd." (involving the candyland.com domain name), the defendant was found to have diluted the mark "Candyland," well-known as the name of a children's board game, by using it to host an adult-entertainment Web site. In that your client's mark is neither famous nor in any danger of having its reputation tarnished by my Web site, a claim of dilution would be extremely farfetched. If that is the claim you are making, however, please explain the basis for it.
I find it interesting that you did not bring up the case involving another Hasbro trademark, "Clue." In many ways this case seems closer to the situation between your client and myself than any of the other domain name disputes that you cite, except that Hasbro's mark was both previously registered as a federal trademark and had become widely known, factors tending to make Hasbro's position much stronger in that case than your client's position is in this one. Notwithstanding the relative strength of Hasbro's position, though, a preliminary injunction has been granted to the owner of the clue.com domain name, preventing NSI, the company that maintains domain names, from suspending the domain name in response to Hasbro's request for such a suspension ("Clue Computing, Inc. v. Network Solutions, Inc.," No. 96-CIV-694-5, Colo. Boulder County Dist. Ct. complaint filed June 12, 1996).
In conclusion, you have yet to provide any legitimate legal authority supporting your client's position. It seems increasingly likely that your client is not, in fact, motivated by concerns over trademark infringement, but is merely trying to intimidate me into abandoning the lies.com domain name so he can obtain the use of it for himself. If such is the case, I urge your client again to reconsider his present course of action. He would be better served to simply pick another domain name (liesmag.com and lies-mag.com are obvious alternatives; neither is currently registered) and get on with his project. Or, if he believes the "lies.com" domain name would be of great value to his business, he should contact me directly to discuss a transfer involving suitable compensation.
I look forward to hearing your response. I especially look forward to receiving the following particular pieces of information I have requested in this letter:
Thank you very much.
cc: George Rafter
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