Trademarks and "likelihood of confusion"

[Brain411]

I am the owner/operator/webmaster of the website godunes.com I have recently been contacted by the owner of gotdunes.com threatening to take legal action because they have the word mark "Got Dunes?" trademarked and tell me that my website is infringing upon it, although I do not sell any products of services, nor compete with then in anyways other than popularity possibly, and our content while simliar, like dozens of other sites is unique and original.

I feel they are trying to pick on the new website, because its doing much better than theirs, and figure I won't put up much of a fight, do I have one or should I walk away.

Thanks
Ryan

California

[aaron]

Did your use precede theirs? Are you addressing the same subject matter as them?

[Brain411]

Did your use precede theirs? Are you addressing the same subject matter as them?

There site is older than mine and yes we address simliar subject matter, offroading although I have much more content and information than their site

but its not like my domain it gotdune.com or gotdunez, its godunes two different meanings and they don't even sound the same

[aaron]

Do you use "godunes", "go dunes", or anything similar in relation to "computerized on-line retail services in the field of clothing, hats, beanies, shirts, tank tops, sweaters, shorts, stickers, and decals"? I assume not, from your original post; that's what the USPTO indicates that their mark covers.

Ask them to specify how you are infringing upon their mark.

[Brain411]

Do you use "godunes", "go dunes", or anything similar in relation to "computerized on-line retail services in the field of clothing, hats, beanies, shirts, tank tops, sweaters, shorts, stickers, and decals"? I assume not, from your original post; that's what the USPTO indicates that their mark covers.

Ask them to specify how you are infringing upon their mark.

I do not sell anything online, I only have stickers that I have had made and pass out to friends offline to put on vehicles to get the name out, and I never ever seperate GoDunes into Go Dunes

I have asked them to specify what I am infringing on, and they will not answer, just threaten me with legal action if I do not shut my site down by 5:00pm friday Sept 1, actually this is there demands
1. Close down the www.godunes.com website as well as any websites
using a variation of godunes that you, may own
or operate.
2. Do not distribute, donate, or sell any product that bears the name
“godunes” (or any derivative) that you, have
produced or are in the process of producing.
3. Stop using the name “godunes” screen name/handle on public message
boards, including but not limited to MySpace and Brain411.
4. Removal of any and all links to www.godunes.com that may exist on
internet sites.

[JoeW]

They're just trying to scare you. I do not see any sort of infrigement.

In reality, it is not like you're profiting off their users typos, or anything of the sort. You are a website, in which is similair yet unique and your names ARE diffrent. I would personally refuse to comply, until they provide a sufficient warrant to infringement.

[Brain411]

*update
Well i've hired a trademark attorney, who says she has no case and I am in the process of getting my name "GoDunes.com" trademarked but when asking the lawyer if I am going to be safe selling merchadise with the following logo/tagline he didn't seem so sure... im not sure he's taking it as serious as I am



What do you think ? should I still be safe or am I taking a chance ?

Ryan
webmaster
http://www.GoDunes.com

[JoeW]

Oh Gosh, that is an iffy situation.

I am pretty sure, once you have the name trademarked - you can produce the material. I would just ensure that the material is very diffrent, thus don't use the "West Coast Choppers" deal for your logo, and do not use the heart. If you create a completely diffrent line of clothing, then you should be fine.

Your websites are completely diffrent, I wish I could think of an example like this, however I cannot. There are many cases where diffrent people own the dot com extension and the dot net/org etc. in which the website content is similair, yet diffrent and they sell diffrent material without conflict - usually becuase they both don't exactly care about the other person.

It is sad that GotDunes.com cares soo much, about you dropping the T and making a similair website. It is not like when I google GotDunes, your website is second or something silly like that. If somebody forgets the "T", they will end up at your website, but that is their mistake. Also, when advertising GotDunes via word of mouth, "GOT" sounds very diffrent than "GO", thus there is no warrant that somebody might actually advertise your website, when meaning to advertise theirs.

I would let it go. Just get your name trademarked, and drop that attorney or drop them before. If you went to school for 4 years if not more, and you cannot answer a law-related question in your field, and you don't figure out the answer promptly, then you shouldn't be in the field.

Keep us updated, and best of luck!

[aaron]

I personally would encourage you to follow the advice and counsel of your lawyer.