Don "Big Dog" Clark got a message about potential copyright / trademark infringement from a vendor and put forth a most interesting reply that apparently did the trick. He gave me permission to repose it here as an exercise in "little guy strikes back without a lawyer and gets results."
Hope you also find it interesting reading and research.
On July 2, 1998 I received an email from (person) of Big Dog "Whatever". She claims that I am not authorized to use the term "Big Dog" on my internet site at http://www.nwlink.com/~donclark/ and that it infringes on their trademark. I believe this is false as the federal trademark law, as embodied in the Lanham Act, allows concurrent use of the same famous name by parties when such use does not create a likelihood of consumer confusion.
I am asking:
1. the key officers of Big Dog xxxxxxxxxxxx. to review the facts that I listed below and to cease their claims on me.
1. My site does NOT compete or provide related goods, and the marks are not used in the same marketing channels. Further, it would be highly unlikely of consumer confusion between the two as Big Dog Whatever sells products and I give free resources away.
2. Accordingly, under both the common law and civil law approaches, trademark rights are acquired only as to specific goods or services. I doubt that when you registered "Big Dog", you named "to provide free Human Resource Development and Leadership resource materials to the public" as your intent.
3. Under both federal trademark law and state common law, the owner of a trademark normally has the exclusive right to the name only in a particular market and only on particular goods or services. More than one company can have a trademark with the same name. For example, there are 85 active U.S. registrations that include the term "Century," and more than 300 containing "Eagle." Also, there are Apple Computers and Apple records.
4. There is no reasonable likelihood of consumer confusion between your xxx, xxxxxxx, xxxxxx, xxxxxxx, and other products that your company sells and my leadership and human resource development guides that I give away free, hence, there is no infringement.
Also, it would be hard for consumers to confuse a big corporation like you, with a someone like me...an inventory control lead with Starbucks Coffee Company who runs a personal website.
5. One common method for determining trademark infringement is the " five-factor" test which considers the following factors:
(1) strength of the mark - Your mark is not that strong. In just a few minutes I was able to locate the following Big Dog products and sites on the internet:
A. Big Dog Motorcycles - http://www.easyriderschi.com/bigdog2.htm and
B. CyberLinks.com - http://www.bigdog.com (Big Dog is its domain name)
C. Big Dog Technologies, Inc. - http://www.bdol.com/home.htm
D. Paris, Pee Wee and Big Dog by Rosa Guy, published on 1/6/86 -
E. BigDog WebSites - http://www.dxd.com/
F. Big Dog Band formed in 1985 - http://www.bigdogblues.com/
G. Big Dog Inn - http://www.virtualcities.com/ons/ca/w/caw56010.htm
H. Big Dog Brewing Cooperative -
I. Big Dog and Little Dog Going for a Walk - A book
J. Web Site Hosting - http://www.bigdogcommunications.com/webhost.htm
K. Big Dog Media Inc. - http://www.icca.org/firms/f15925.htm
L. Big Dog Radio at 96.9 FM - ttp://www.bigdog969.com/
M. Denny Schaffer - Disk Jocky - http://www.925kissfm.com/jockdeny.html
N. Ale - http://www.bwaldron.com/bigdogale.html
O. Sport Teams - http://www.scorpiondarts.com/Pages/dartleag/20.HTM
P. Cross Country Cycling -http://www.usacycling.org/norba/97results/n97-12.html
Q. The Title of an episode of "Wishbone" (TV series) http://llohio.wviz.org/ITV/Language_Arts/Wishbone/
R. Milwaukee forward Glenn Robinson aka The Big Dog
S. Automobile Sales - http://www.cumberlink.com/bigdog/
T. Hospitality Group - http://www.holycowbrewery.com/
U. A Big Dog Cocktail - http://psp.pair.com/barnone/b/d_bigdog.html
V. Dog Supplies - http://www.bigtallk9.com
W. Bar and Grill - http://www.casinocity.com/us/nv/bigdog.html
X. Big Dog Small Fence - a band - http://www.bdsf.com
Y. Messenger Service - http://www.bigdogms.com
Z. Graphic Design Studio - http://www.bigdogstudios.com/
AA. plumbing Company - http://www.bigdogplumbing.qpg.com/
In total, 6901 sites were found while performing a search on "Big Dog" using AltaVista: http://www.altavista.digital.com/
Also, in May 1992, Jay Leno took over The Tonight Show on NBC and at the end of every show the closing credits lists "Big Dog Productions" along with the sketch of a dog.
(2) similarity of the mark - You use a (dog) while I use a drawing of my dog, "Lazy," who was our family pet (a mix between a terrier and a beagle) for over 15 years until she passed away this year on June 20th. It was created by me using Microsoft Paintbrush. Please look at the drawings on my web site. It looks nothing like your dog. Also, the URLs for our web sites are completely different.
(3) class of goods and marketing channels - Your goods are sold to the public while my goods are cyber documents and are given to the public for free.
(4) evidence of actual confusion - your domain name is "www. xxxxxxxxxx.com" while mine is "www.nwlink.com/~donclark"
(5) intent of the second user - My intent since starting my site on July 13, 1995 is to provide free resources to people, business, organizations, and schools. Which it has. I have received email from airlines, police departments, universities, students, businesses, charities, schools, organizations, and a nuclear power plant in India thanking me for my guides.
Also, I did not take the name Big Dog from you. I got it from the saying "To the Big Dog!" while serving with the U.S. Army in Germany in 1976. We used that saying to mean "Let us do it!" I even have a picture of me, taken in 1976, standing on a piece of heavy equipment, owned by the U.S. Army, with the slogan "To the Big Dog!" painted on it.
6. A second method for determining trademark infringement is the "eight- factor test" (used for hi-tech goods and services) which includes the five- factor test, and adds the following three factors:
(1) the proximity of the goods - Again, your site is "www.xxxxxxx.com" while mine is "www.nwlink.com/~donclark" which shows that your site is a commercial site and mine is a personal web site. The goods that you sell and the goods that I give away have nothing in common
(2) the degree of care likely to be exercised by the purchaser - I sell nothing, hence no one can purchase anything from me. People are free to use my materials as long as they follow the copyright restrictions.
(3) the likelihood of expansion of the product lines - My site is strictly a site for free resources. In fact, according to the agreement with my internet provider, I cannot sell goods or services through my site.
7. The primary public policy behind the acknowledgment of trademark rights is the protection of consumers. As set out by the U.S. Supreme Court, "The law of unfair competition has its roots in the common-law tort of deceit: its general concern is with protecting consumers from confusion as to source." The use of a confusingly similar trademark may cause a consumer to purchase goods of a different or inferior quality than those the consumer sought, based on information the consumer gathered concerning the original trademarked goods.
No one could confuse the products that you sell verses the documents that I give away for free.
Also, my free resources bring no shame to the name Big Dog and my free resources are NOT inferior:
A. The American Society for Training and Development named Big Dog's HRD Page as Surf Site of the Week for May 4, 1998 - They wrote "What a site. Kudos to Don Clark of Seattle Washington for creating the Big Dog's Human Resource Development Page." - http://www.astd.org/CMS/templates/index.html?template_id=1&articleid= 10954
B. The 1997 ASTD Training and Performance Yearbook, page 501, and published by McGraw Hill, gives Big Dog's HRD Page their highest rating.
C. Training Supersite, sponsored by Lakewood Publications, gave Big Dog's HRD Page an A+ rating - http://www.trainingsupersite.com/
D. Training Magazine, April 1996, page 101, calls - Big Dog's HRD Page "The World Wide Web at its best" and "This site is important because of Clark's content" and "It's at this grassroots level that the World Wide Web begins to be extremely helpful to the training and development fields"
8. Dilution protection is designed to guard against "the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods" or goods which consumers would not see as related enough to emanate from the same source. According to the anti-dilution section found in the U.S. Lanham Act, dilution is "the lessening of capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of -- (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake or deception. Protection of this sort gives trademark owners a means by which to protect their "famous" marks even when traditional infringement is not present.
As shown in paragraph 5. (1) above, there are too many companies, web sites, bands, products, and books using the name Big Dog for you to claim that I am diluting your trademark. Indeed, there are 6901 sites with the term "Big Dog" in them. Marks similar to ones used by several businesses are among the weakest.
Also, unlike Coke or IBM which are famous marks, big dog is a common generic term and the name does not hold the same power of persuasion over the public that Coke or IBM does.
You CANNOT own the generic term "Big Dog", only in context, and owning a mark does not mean complete control.
I am NOT using the trademark in a way that would unfairly hurt the value of the mark, or in a way that might make people confuse me with the real owner of the mark, or which might allow me to profit from the mark's good name.
My intention is
NOT to stop using the term "Big Dog" on my site unless the ACLU, another freedom organization, or a law firm which does not represent Big Dog Whatever advises me that it would be in my best interest to do so. As stated above, my site does not violate any trademark laws, in fact, you are trying to suppress my rights by forcing me to research and work on this matter during a great Independence day weekend!
I believe I will prevail in court if you pursue your claims on me. Also, have you thought about what the publicity will look like if a large corporation attacks a one-person operation who is giving valuable resources away that has nothing to do with your product line? Make no mistake about it, I will not allow this matter to go on quietly...I spent over two decades in the United States Army defending the rights of my fellow citizens, I am prepared to defend my own rights!
Big Dog's Bowl of Biscuits
Here is stuff from the US Patent and Trademark Site site:
Q: "How do I contest someone else using a trademark similar to mine?"
There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law. Local bar associations and the yellow pages usually have attorney listings broken down by specialities. Time can be of the essence. For information about proceedings before the Trademark Trial and Appeal Board, click on TBMP."
"To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same."
More information: http://www.uspto.gov/web/offices/tac/doc/basic/basic_facts.html
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