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nateyoun
Sep 6, 2007, 5:13 PM
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Over the past 8 months, I have been involved in conversations that involve trademarks and rights to my business name. I've been a semi professional photographer since 2002, when I started with Crux Photo. I purchased the domain name, did a quick check to make sure no one (at least not on the internet) had that name or a similar one, and developed a website. Since then, I have been slowly promoting that name, along with my own, and my business has slowly grown. I've done work for companies all around the US, as well as Ireland, Czech Republic, Japan and England. Although I would have liked to grow faster, I am a full time bio-medical engineer, and only have weekends, evenings and mornings to build my business, but that is even shared time with a house, yardwork, family and friends.
About 8 months ago, I found someone through search engines who is/has developed a business named Crux Photography. His name is Chris Rojas and he is a young, and very good photographer from the Denver area. He shoots a combination of skiing, climbing, portrait and architectural photography. I found this when I did a search for Crux Photo, and a few of his profile names came up. He uses both cruxphotography and cruxphoto as profile names and cruxphoto@gmail.com is his email address. In my initial research using whois data, I found that the cruxphotography domain name was originally created on March 31st, 2006 compared to my original name which was created on March 29th, 2003. My concern is that his name is similar and confusing enough that someone may end up at his site, rather than mine. I have a few ads here and there, including in Urban Climber Magazine, and someone could easily search for cruxphotography rather than cruxphoto.
Although my name is not a registered trademark, it is protected by federal law against confusing and similar names, see the Lanham Act, 15 US Code sections 1125 and following. Because both Chris Rojas and I shoot nature and sports photography, this could lead to confusion of potential clients seeking my work. I am lucky to have a family friend who works at a top law firm in Chicago, and specializes in trademark law. He said that I clearly have a case, and has actually spoken a few times with Chris Rojas. I am going to give you a quick history of our interactions over the past 8 months.
In March, 2007, I originally contacted Chris Rojas about the name issue. I was initially seeing if we could collaborate since we had the same name, and potentially get more business. I could handle Utah and he could do Colorado. He was also in the process of trying to work on a book with lots of photos and adventures, and I was thinking I could contribute to that with photos from Utah. He was open to me contributing to the book (1 or 2 pictures, so not much), but he also wanted a lot of effort on my part in marketing the book. Considering he was infringing on my name, I didn't see how me promoting a book that was mostly his work was quite fair. Within a few emails he said:
"So what's next? How concerned are you? Once my lease is up on this domain I plan to move onto another one since it doesn't sound like you want to collaborate on a project and our common name doesn't seem to make you very happy. So, can you wait six months to a year for me to transition over to another domain/company name? Or is it so crucial that you believe I must give up the domain right now? "
I said that 6 months would not be a problem. 6 months later, he had not changed anything, and was still active in growing his business under the Crux Photography name by adding profiles and signing up with companies like Imagekind and others that sell and display art work of photographers. When I contacted him about not changing his name, his response was that he had talked to some lawyers, and did not feel he needed to change his name, and then offered:
"I'll sell all rights to the name and my website for $5,000. I figure that should cover the cost of re-establishing my network."
Even though he had admitted:
"All my contacts I have met in person then later referenced to my site."
Which in my mind means that it was be very easy to re-establish his network. In consulting with the trademark lawyer, because he offered to sell me the domain, that technically makes him a cyber squatter which carries heavy penalties if he is taken to court.
So here lies the question/advice/etc. My lawyer and I have contacted Chris Rojas about the infringement situation. Chris has refused to discontinue using the name, and even insulted my lawyer. He offered to point out the flaws in his argument, and then quickly reneged and said that he wouldn't waste his time. From what I can tell, he's trying to call my bluff. I have tried contacting the companies that he has profiles in, and most of them will not do anything without a court order. I really don't want to go to court, both for me, and him. It would cost us both a fortune, and essentially run us both into debt that we do not need. It also seems silly. Although there may be only a hand full of times someone has been confused, if Chris continues to grow his business (he wants to do it full time), he will eventually have enough contacts and links and activity that when you search for cruxphoto, you'll get cruxphotography the first link. Being part time, it is difficult enough to pick up clients, let alone to have to fight against another photographer using the same or similar name.
So first, any advice? Am I silly for even worrying about it, or is this a legitimate concern?
As for help, I'm hoping that there is someone out there that actually knows Chris Rojas. He lives in the Denver area, and works for the Metropolitan Newspaper as a photographer. He is also going to going to a local community college for photo journalism. If you know Chris, please sit down and talk with him. Maybe he has a valid point to his argument but is having trouble communicating with me. But I am hoping that someone can convince him that he should probably change his name, not only because it is the right thing to do, but also because he probably doesn't want to deal with potentially lost business to me.
Thanks for your time, I look forward to you feedback or any additional questions.
Nate
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roy_hinkley_jr
Sep 6, 2007, 9:45 PM
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Seems like you're both foolish for using a generic brand -- it would be surprising if there aren't others who use it too. Heck of a lot better if photo buyers know who to call by name. Just get your own name domain, or at least something truly creative, and move forward.
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nateyoun
Sep 6, 2007, 9:53 PM
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I have not been able to find anyone, or anything else using the term Crux Photo until Chris's site. Although it may seem generic as you say, that's what makes it easy to remember, just like rockclimbing.com.
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zionvier
Sep 6, 2007, 10:13 PM
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It's hard to make a decision without hearing his side, especially since according to you he spoke to lawyers and then made a decision to not change his name. Perhaps the lawyers told him he's in the wrong and he doesn't care? Maybe they told him a decision in court could go either way? or maybe they told him he's fine? Maybe he didn't tell the lawyers all the details needed for them to tell him he's wrong? who knows.
Sometimes it only takes something as simple as a legal nudge (filing the basic paperwork) for them to back down. He might be calling your bluff and figuring you wouldn't be willing to spend the money/time needed to take him to court. Same as what a little kid would do when testing the limits of their parents... if you ignore what they say and they never follow through on threats you've one... but once they follow through on even a portion of the threat the kid backs down pretty quick. Filing the basic legal paperwork might be enough for him to say "Screw this, I'm not going to court for something stupid like this, I'll just change the company name".
But I hope once you get this all figured out you'll actually do the paperwork to register your company name and avoid any future situations.
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stymingersfink
Sep 6, 2007, 10:18 PM
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fuckit. include the cost of legal fees as damages in the suit, especially if your lawyer will take it on spec.
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djoseph
Sep 6, 2007, 10:43 PM
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I'm not an attorney, but am an entrepreneur who has worked with trademark issues. All of the following is IMO. Trademark attorneys feel free to correct me.
Per some of your points/questions:
nateyoun wrote: Although my name is not a registered trademark, it is protected by federal law against confusing and similar names
Perhaps generically speaking... however, unless your mark is a registered trademark/servicemark with the USPTO, it is not automatically protected. NOTE: even if it is registered, you still have to legally defend it to protect it. See, for example, the enormous legal efforts of Xerox, Adobe (Photoshop), etc to preserve their already-registered trademarks. If they stop defending them, the trademark registration will be considered abandonned (or whatever the legal term may be.)
Point is that you not only need to register a trademark/servicemark with the USPTO -- you also need to continually defend it legally. That is the only way to maintain "ownership" of it.
nateyoun wrote: Considering he was infringing on my name
If you and he are both using the same trade name, it is not automatically considered an "infringement." What if there is someone else (whom neither of you know) who has been using the same name since 1980? Are you both "infringing" on him?
Note, also, that some trade names are remarkably common. e.g., Joe's pizza, etc. No one is "infringing" on anyone else by also using the name. Generally (I believe), towns/municipalities will decide whether to grant a trade name status based on the presence of similar trade names in that town.
Of course, once a trade/service mark is registered with the USPTO -- and legally defended -- you could make the argument that someone is infringing nationally. But that clearly hasn't happened yet.
nateyoun wrote: In consulting with the trademark lawyer, because he offered to sell me the domain, that technically makes him a cyber squatter.
I believe that your attorney is misinformed about what constitutes cybersquatting. I would certainly get a more detailed, second opinion.
Anyway, those are some thoughts. Again, I might be wrong -- attorneys please correct me if so.
Note also that once you file a TM/SM application with the USPTO, others (i.e., Chris) can challenge the application. Not sure if that automatically halts the process, or whether it defaults to an arbitration or legal recourse.
Good luck... TM/SM application and defense can be quite a handful.
Dan
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nateyoun
Sep 6, 2007, 11:06 PM
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That is a lot of good information. I don't want to jump to conclusions about my friend who is the attorney, but he works for a fairly successful law firm in chicago, in their copyright and trademark division. Additionally, he has represented companies here in Utah (that I know of) with unregistered names. The used car company "Low Book Sales" sued for name infringement against "Lower Book Sales". The ruling was in favor of Low Book Sales, who originally had the name because of the Federal Lanham Act that protects unregistared trademarks.
The reason that I am being so active in talking with Chris, and trying to find a way protect my name is because I agree that I need to continue to defend it.
As for cyber squatting, you may be right, I don't think he deals with that to much.
If someone else is using Crux Photo, they are not using or defending it nationally.
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mr_rogers
Sep 6, 2007, 11:31 PM
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nateyoun wrote: O So first, any advice? Am I silly for even worrying about it, or is this a legitimate concern?
First:
As you have a trademark lawyer who you claim is a "good one" then ignore any and all legal advice that does not come from a lawyer who practices trademark law.
What people 'think' the law should be, what they 'think' is 'fair' or 'just' or 'right' is NOT what the law necessarily is. That may not be cool, but that's how it is.
Second: You want to sell photos, he wants to sell photos, you both are taking pictures of outdoor sports, you use very similar names --> You have a problem.
Your options are:
- Get a different name.
- Sweet talk him into changing his name, it seems like this has been tried.
- Unleash the hounds.
Perhaps unleashing the hounds will result in him packing it in. But perhaps he's got a family friend who's a badass TM lawyer telling him your claims are BS. You say it will cost money and it will, a lot of money just to get the ball rolling in the hopes he will settle, even more to go to trial and win. The main point is:
It will probably cost more than $5,000 to settle this through lawyers.
So if you can't sweet talk him, and you're unwilling to change your name, and you are seriously going to pursue this photography thing (meaning it will matter that someone else out there is using the same name as you) then you need to decide if you'd rather pay off this fellow right now, or go for the win through litigation.
Whatever the situation, you clearly need to do more work protecting your mark. Get some advice from your TM lawyer friend on this - do what he says.
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oldsalt
Sep 7, 2007, 12:41 AM
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2 cents worth from a neutral observer...
Fighting will cost you $$$
Giving in will cost you name recognition = $$$
Save some $$$ and change to "Nate Youn's Crux Photo."
See how easy that was.....
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shaylily
Sep 7, 2007, 1:28 AM
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I happen to be an IP Paralegal and djoseph has some very valid points. Is your friend someone who dabbles in IP and litigation or has he passed the PTO exam? If he dabbles, then you need to see someone who practices IP full-time. Trademark rights in the U.S. are based on first to use and not first to register. Have you or your friend performed a formal search? It should also cover state and common law.
Since I am not an attorney, I cannot give legal advice. However, if you PM me, I'll try to answer some of your questions and point you in the right direction for answers.
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nateyoun
Sep 7, 2007, 2:12 AM
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My friend is a Patent and Trademark lawyer. He is a partner at Chapman and Culter. But you are right about trademark rights in that it is first to use, and that is why I haven't found a compelling argument to trademark my name.
As for formal search, I've done an internet and USPTO search, and no one else uses cruxphoto, or any variation of that for photography.
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armsrforclimbing
Sep 7, 2007, 3:09 AM
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While it seems that you have actively defended your name, you showed signs of initially being open to collaborating. I don't know to what extent you have documented this issue, but you may not have actively defended your domain in a timely manner. Unfortunately, since you didn't immediately pursue the issue legally, you have allowed him to build his own business under that name.
You have done a good job of clearly stating your case. However, without a lawyer looking over the details, you may have misrepresented yourself to your disadvantage.
I would suggest that you negotiate the purchase price of the rights to the name in formal arbitration out of court and move on. The cost of the legal fees and purchase price could be chalked up to getting him out of your hair permanently.
It's an unfortunate situation. Take this with a grain of salt, I am only playing Devil's advocate
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