Eminent Domain Name: What To Do When Your Brand Is Coveted
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Late last week, Erin Kleinberg, Stephanie Mark and Jake Rosenberg launched a new fashion blog. The design was solid, the content striking and the concept – a peek inside the closets of fashion editors and insiders – met with enthusiasm. The name, however, was met with raised eyebrows. The Coveted is a fashion blog that focuses on Jennine Jacob’s personal style. Over the years, it’s been hosted on a blogspot URL, thecoveted.net and currently resides at the-coveted.com.

As of last week, The Coveted is also the aforementioned newly launched fashion blog, which resides at thecoveted.com.

Confused? Many fashion blog readers were when they realized that the blog at thecoveted.com (no hyphen) was not affiliated with Jacob’s existing blog (the-coveted.com), which has been using the name since 2007.

“Someone owned thecoveted.com for a long time, and did nothing with it,” says Jacob. “When the domain changed hands, I figured it might be a shop or another shopping portal, but certainly not a fashion blog.”

Every major fashion brand has had an experience with someone infringing on their brand online. While The Coveted confusion marks the first case we’ve seen in media, it’s hardly the only recent example of brands colliding over the rights to a web name.

Facebook currently has a lawsuit pending against TeachBook, an online community for teachers, and Lamebook, a humor blog that posts anonymized screenshots of Facebook users’ status updates. The reason? Facebook asserts that the inclusion of the word “book” dilutes their brand. Teachbook successfully trademarked the name, withstanding a challenge by Facebook. Both sites have refused to change their site names, but other sites have when threatened with legal action by Facebook.

So where does that leave the site owner who wants to protect against competitors who borrow a brand name full stop, as well as Goliath companies who have large legal teams? Simply put, it depends on the situation.

Roman Fichman is a New York based attorney who works with startups, and says “owners of trademarks are required to protect their registered marks from unauthorized use or from use that may dilute their mark, otherwise they stand to lose the protections and rights that are afforded to them.” He notes that to the average user, sometimes “this does not ‘jive’ with common sense.”

Joshua Braunstein is the general manager of Corsearch, a company that provides trademark research services  including worldwide trademark infringement monitoring on domain names. He says “[Facebook] also included that Teachbook was calling itself a “Facebook for Teachers,” lending to the confusion.  While it is up to the courts to determine the validity of the trademark, it is the strength of the bond between the brand and the product or service it identifies that determines how strong the brand’s “contract” is with the public, and whether or not confusion could actually exist.”

While the lawsuits may not seem fair “these 800lb gorilla companies are the type to try to go after any portion of their name,” according to Robert Siminski, a Michigan patent and trademark attorney. “Most companies can’t afford to fight Facebook. There aren’t many legal watchdogs willing to take on a Facebook either,” and the company knows this. The issue for both comes down to how likely a user is to be confused, however. “The fact that [Teachbook is] a social networking site as opposed to a business selling books to teachers creates more of an issue with Facebook,” he says. The fact that Lamebook can be presented as a parody or commentary site will put them in a stronger position when they have their day in court.

Simply put, if you find your website name targeted by a big brand, you’ll very likely end up in court if you don’t change your name. Your best shot at winning and keeping the right to your name is to present evidence that your website isn’t likely to be confused with the larger company’s due to different functionality or offerings.

When it comes to the case of the two Coveteds,  the case is a bit more clear.

 

“On its face, this looks like a stronger case of confusion than the Facebook/Teachbook example,” says Siminski. “Your trademark rights begin upon using the trademark, it has nothing to do with registration. If you have a broad enough audience, in essence you don’t always need a registration.”

Braunstein adds “In fact, the first person or company to use a trademark will usually trump the first person to file the name with the USPTO.  That said, filing with the USPTO is a critical step in protecting a brand, and affords you federal rights and protection of the name.”


“What can I say?” says Jacob. “It’s disappointing [thecoveted.com] never reached out to me. It’s disappointing someone with the last name Kleinberg is leaving less than sensitive comments about my blog on posts about the controversy. Most of all it’s a disappointing shift in this industry that’s been built on the communal support of dedicated bloggers. My hopes are that we can all reach a win-win situation, but at the moment, I’m not certain what that looks like.”


“There is probably a claim [for Jacob] at common law,” says Philip Marcus, a small business lawyer in Maryland who specializes in intellectual property.

“State/common law trademark laws may protect the first party to use a name,” Fichman explains. “A company can send a cease and desist letter based on state or common law trademarks even if that company does not have have a federally registered trademark.” While every case has to be evaluated based on its own facts, Fichman advises the “first thing that a startup should do before choosing a name is to check out the landscape and see if there are any competitors that have similar names that the chosen name may be confused with.” Regardless of size, he says those with or seeking a trademark should “be vigilant and possibly follow in Facebook’s steps in pursuing infringing parties.”

 

In a recent development, attorneys representing theCoveted.com have threatened legal action against Jacob, claiming among other things that the Coveted is a generic term.

Braunstein says that while a domain like face-book.com could probably be challenged, something like buy-car.com may prove tougher to pursue. “Brand holders have many options, and these options aren’t only reserved for the large websites,” he says.  ”The UDRP (Uniform Dispute Resolution Policy) allows you to challenge domains that willfully infringe on others.  The AntiCybersquatting Consumer Protection Act (1999) also allows US domain holders to challenge domains that are confusingly similar to a famous mark (like the face-book example) or registered in bad faith (i.e. registering an incorrect spelling or mistyping of a popular domain name like gooogle.com, or to hold it for ransom from the proper brand holder).  While the fame of the mark is certainly a factor in whether or not a website might be confused with another, these resources are available for all brand holders.”

Plainly speaking, Kleinberg and Marks should have chosen a different name for their fashion blog once they became aware it might be confused with an existing, established fashion blog. While Jacobs has not registered for a federal trademark on “the Coveted” yet, she has both the right and responsibility to stop Kleinberg and Marks from using the name if she wants to protect her brand, and an additional level of recourse at the domain level since the Kleinberg/Marks “the Coveted” appears to be confusing people who are searching for Jacob’s blog.

According to Google’s external keyword tool, the phrase “the Coveted” receives 2400 searches every month.

Speak Loudly and Early

All agree that while website owners aren’t totally vulnerable without a formal trademark filing, it offers the best protection when protecting or defending your name.

“Registration also means that one can go to a federal district court, instead of a State court where the plaintiff does business,” Marcus explains. “Normally a state court has no power over someone in another state, which may or may not reach the defendant; a federal district court has power over anyone in the US.”

Thecoveted.com is registered in Canada, but Siminski says that United States trademark registration may still offer some protection. “If the majority of the people accessing the site are based in the U.S., it’s likely that someone could enforce rights against them even though they’re based in Canada.”

The first step to protecting the name you’ve built online, or are planning to build, is to be vocal about it. Siminski suggests even a simple statement on the homepage of  your website can “put the public on notice that you’re claiming rights to the trademark.” The domain name alone may not be enough, but merely making that statement strengthens a website owner’s position. “It’s not as good as a federal registration,” he says, “but better than not outwardly claiming trademark rights.”

Federal trademark registration doesn’t always require an attorney, but using one is advised and costs between $1000 and $1200, inclusive of attorney fees, for registrations which are accepted. Staking your claim to a trademark costs nothing.

Representatives of TheCoveted.com were contacted for comment, but we have not received a response.

 

Originally posted on Signature9 with updates.

•••

Update: Rachel at The Greyest Ghost started a petition:
If you were in fact confused by the appearance of thecoveted.com and were unable to distinguish it from the-coveted.com without further research, or clarification from Ms. Jacob herself, please sign this petition in a show of support.”

Support The Original Coveted: Sign the petition here

•••

Comments

  1. We were just talking about your plight in East London today. One photographer/blogger friend was also a lawyer. I’ve just lost a lot of time (since 3rd Dec) on a similar case, w/Hachete Filipacchi/Spanish Elle http://tiny.cc/jacrp and while I had felt all principled and feeling that ‘right’ was on my side and the good guys would win – and since a lawyer in Madrid was even donating her time for free – and since I was actually OFFERED FINANCIAL COMPENSATION from the offending parties, and all we had to do was come up with a reasonable amount (which we did) – I was knocked sideways last week to receive a letter from HF’s lawyers basically saying f** you.

    But what has really surprised me is that, altho my story was kind of worse than the Cook’s Corner Controversy which was covered by every newspaper in America, no one in the newspaper wanted to touch my story. It took me less than 24 hours to realise that what I was trying to do was fight a large publication and that no journalist would touch my story. IN the case of Cook’s Corner they were happy to destroy the woman’s business, because she wasn’t owned by Hachette Filipacchi.

    Ultimately, I let it go. Mine were only a few photos and a few name callings.

    What my lawyer friend was saying is this Coveted case is becoming an issue between the blog world and the traditional journalists.

    I feel for Jennine Jacobs and hope it is comforting her to know that we’re all supporting her – as she did for me.

  2. That is just awful, why couldnt they simply change the name when they found out it was so similar to the original coveted!! Im off to sign the petition we have to support each other!

  3. WendyB says:

    When I was naming my company, I searched for other people named Wendy Brandes in the jewelry and fashion industries. If I’d seen someone established under that name, I would have used a different name for my company, even though I am, indeed, named Wendy Brandes personally. I wouldn’t have been interested in creating any kind of confusion. Other people, apparently, thrive on that kind of thing.

  4. It’s not possible to believe that a former Vogue employee did not do a simple Google search and highly unlikely that someone attempting a fashion site wouldn’t be familiar with IFB and Jennine. Deliberate and vulgar to try to shoplift intellectual property with a market value and following.

    Signed the petition, posted questions and asked the usurper on the facebook page to take it down and promised that move would be highly supported by the blogging fashion community.

    Planned without a doubt.

  5. lisa says:

    I signed the petition. Best of luck to you in all of this, Jennine.

  6. Treacle says:

    Petition signed.

  7. I will admit that I was one of those confused users. I just discovered Jacob’s blog through a photo reference on IFB. I typed in the URL manually and came to the new site and just thought to myself “oh she must have redesigned”. I never thought that it was a different blog.

    Although the new site is nice, it does show a lack of innovation if they could not come up with another name for their site after finding that The Coveted was already being used by another in the same industry.

    Good luck!

  8. Vyque says:

    So if “the coveted” is a generic term, I can create thecovtednohyphensucksbutt.com and they have no ability to make me take it down? Just saying…

  9. This is the most informed and balanced article I’ve read about the issue yet. A++
    Team Jennine!!

  10. Along the same lines of what WendyB said – if you’re starting a new company or blog, you really should do your research first! It’s pretty easy to do.

  11. Krista says:

    Insightful article on the issue. Something that may help other bloggers. I hope it turns out in your favor. I’m still surprised by the argument that the 2 couldn’t be confused. Fashion. Blog. Hm?

  12. Eura Yuste says:

    Go Team Jennine!

  13. Kit Lee says:

    I’m supporting you Jannine, they are a disgrace. NYFW is coming nearer and nearer…hope there’ll be some support and spread the messages across.

    I’m waving a flag for you!!!!!

    Kit
    Style Slicker (UK)

  14. diana says:

    signed!

  15. Melissa says:

    TEAM JENNINE!

  16. de la Pen says:

    I can’t believe they didn’t just change the name of the blog. Like I truly don’t understand that. IFB and Jeninne’s The Coveted are like the go to places for fashion bloggers. There’s definitely a war b/t fashion bloggers and traditional media/editors. Did anyone see those comments that Franca Sozzani of Vogue Italia made? Yea…all is not well between bloggers and editors.

  17. Nightmare – i’m signing right away – go team Jennine

  18. abiha ali says:

    i have seen your blog its good,I am also working on it, its really helpful for me.Keep updates.

  19. Hi Janine, On the day that I wanted to sign the petition I heard that you had won the case! Its awful that you had to go through such an experience particularly when you have worked so hard on The Coveted.

    Congratulations for winning.. Onwards and upwards ! xx

  20. Roni says:

    That’s crazy and I’m so sorry something like this happened to you. The definitely changed the name of the site, so something must’ve made them realized they were messing with the family @ IFB! I experienced something similar, when I went to register my blog Brooklyn Posh on facebook. A girl I have mutual friends with made her facebook URL facebook.com/brooklynposh. It made me so upset because she damn well knew who Brooklyn Posh was.Good luck in your endeavors Jenine!

  21. Felicia says:

    I went through this EXACT same situation with the branding of my blog of five years, The Well-Heeled Society. Thanks to a malicious malware attack, Blogger froze my original URL and I immediately secured the domain name by using the prefix of “the” within the new URL.

    Unbeknownst to me, Blogger released my original URL a couple months ago, and some random, novice blogger (who obviously has been living under a rock) started using it. Not realizing she was dealing with a stiletto-wielding wordsmith, I immediately sent her a love letter introducing myself. I also unleashed my fellow Sole Sisters on her (what can I say? I offered them champagne tea!) to the point where she had no choice BUT to change her blog’s name.

    Problem is, the URL still shows as wellheeledsociety.blogspot.com, which totally confuses those who have me on blogrolls. Any suggestions on further actions?

    Thanks in advance!

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