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.”