Real-life examples of trademark disputes are always interesting. Some cases are clear cut and quick to resolve, but many fall into the gray zone of is-it-or-isn’t-it-trademark-infringement. One such case is going on right now.
Manhattan-based startup CaseRails was started over 2 years ago by three co-founders. The company creates and manages legal documents. Recently, co-founder Erik Dykema was contacted by trademark lawyer Sanford Asman, who controls websites and related trademarks for the terms “CaseWebs” and “CaseSpace.” Asman believes that CaseRails is too similar to his trademarks, and has requested that CaseRails change their name or face a lawsuit.
In a letter sent to CaseRails, Asman wrote, “I take very seriously any third party attempts to use ‘Case’ formative marks in connection with Web-based legal applications. I must demand that you agree to voluntarily abandon the use of ‘CaseRails’ in connection with your product. While I understand that your specific software is used to generate legal documents, I have written legal document creation software able to generate Microsoft Word documents in legal software that I developed, whereby the inclusion of such functionality is well within the scope of my existing marks and their reasonably expected expanded uses.”
Asman has fought to protect his trademarks in the past. He won a lawsuit against a company called CaseWorks Web in 2011. CaseWorks Web was forced to hand over their domain name and trademark to Asman.
Dykema is unsure how to proceed. He and the other 2 co-founders don’t want to change CaseRails’ name because of time and money invested, and they believe they have a case against Asman. But for a minimally-staffed startup, a lawsuit would be a huge time sink.
“Are we going to let this guy push us around to avoid the time and expense when we need to build the business?” Dykema asked. “Or do we change the name? We could change it, but it doesn’t seem fair. We’ve invested money from our family and friends in this name. For him to come along and demand the name, right this minute, when he’s not selling software—it feels like a drive-by.”
As of May 22, Dykema had not yet decided how to proceed.
Regardless of how this case turns out, it is a good example of how trademark disputes go down in the real world. It is important to check your domain name and trademarks. Are you well-protected?
Read the original article here.