Trademark Questionable Case

Posted by . updated on 11/11/2009
I have a friend who has owned a domain name for the past 15 years.  It's the name of a major city - also the same name is used by a national clothing company.  Through the years the clothing store has openly advertised on my friends website.  Recently they offered to buy the domain for far less than it's worth.

My friend didn't want to sell so now they are suing my friend for Trademark infringement.  Sounds like a case of taking what doesn't belong to them because they can afford to and they know he can't afford to defend it.

My friend has spoken to 2 law firms.  Both are eager to take the case and get him a little more for the domain name - not nearly it's value.  My friend wants to keep the domain name because it has a great deal of natural internet traffic.

He is willing to quit taking advertising from companies that have competing products with the company suing him.  He just wants to keep what's rightfully his and has been for the past 15 years.  If he lets a law firm settle the case they will be $100,000 richer, he will get about a year's worth of his current income from the website and then be out of business.

No one is willing to talk with my friend about his right to keep the name or the fact that he has openly owned it for 15 years or that fact that the clothing company has purchased advertising from him in the past or the fact that they offered to buy the name from him and when he refused they sued him.

Since their Trademark is for clothing, if he stops taking advertising from clothing companies is there anyway he can keep his domain name.  The clothing company is national and very well known company with extremely deep pockets.

Among other things, they have had 15 years to file suite if they thought they had a case.  Isn't there some for of statute of limitations?

Any thoughts on what can be done?

-s-
Answers (3)
 
DJoshEsq
This post raises many complex issues - all of which cannot be handled inthe abstract.  I would advise your friend to get an experienced trademark attorney to defend him and one that he trusts. 

Without knowing the specifics of the case, it is very difficult to give advice. 

I would be willing to discuss your friend's case if he wants to contact me.

 
 
JSonnabend
Where is the lawsuit pending?

- Jeff
 
 
stcrim
Email me for the state.

My friend has owned and used this domain name for 15 years with the full knowledge of the suing company.  Isn't there a statute of limitations on this type of thing?

-s-
 

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