Architelos sent cease and desist letter to intellectual property law firm, with a predictable result.
What happens when you send a cease & desist letter alleging trademark infringement to an intellectual property law firm? You get sued.
That’s what happened after new top level domain name services company Architelos sent a C&D to California-based Cotman IP this month.
DeSantis Law Firm, which represents Architelos, sent the C&D (pdf) to Cotman IP earlier this month, claiming Cotman was infringing on its NameSentry mark.
Architelos filed for a trademark on NameSentry, a top level domain name abuse monitoring system, in October 2012. The trademark application claimed first use in April 2012 and the mark was registered in May 2013. (It originally filed an application in April 2012, but abandoned it.) Cotman alleges that Architelos’ first use of the mark on its website was actually in November 2013.
Regardless of when Architelos starting using the mark in 2012 or 2013, it’s clear that Cotman IP was using the brand NameSentry before Architelos. Cotman claims first use in November 2010, and included an Archive.org printout of its site from 2010 showing its use of the mark (pdf).
Cotman’s NameSentry service is a trademark monitoring system. There’s a bit of irony here: Cotman apparently didn’t use its own service to monitor for “NameSentry” trademark applications, nor did it it try to register the mark with the U.S. Patent and Trademark Office.
Cotman IP is asking (pdf) for declaratory judgement for non-infringement of a federal trademark and cancellation of Architelos’ NameSentry trademark registration. It is also claiming false designation of origin, common law trademark infringement, unfair competition and common law unfair competition. It filed its federal lawsuit in U.S. District Court – Central District of California.
Architelos’ NameSentry product is used by the majority of currently delegated new top level domain names. It was granted a patent related to the product this week.
George Kirikos says
Architelos owns the NameSentry.com domain name. They’ve also registered European and Canadian trademarks for “NameSentry”.
Sam says
Yeah, American courts typically don’t care about foreign laws/trademarks. I believe that’s primarily due to laws that forbid the use of foreign laws/decisions in American courts. Whether it’s a protection of America’s individualistic beliefs or pure xenophobia, that is up for debate.
John Berryhill says
Architelos EU and CA registrations are irrelevant in a US federal court action.
It is pretty obvious that Cotman was using NAMESENTRY long prior to Architelos, and can verified in just a moment by conducting a date-ranged Google search for Cotman and NAMESENTRY.
Sending a c&d letter to a senior user of the term at issue is not only stupid, but doubly stupid when it is done by a claimant which professes some sort of expertise in intellectual property.
Morons.
Rubens Kuhl says
Next step: contest to choose a new name for its product. My suggestion is NameWatch… ooops, lots of TMs in this too. 😉
Kevin Murphy says
Architelos was using the name from August 2013 at least. http://domainincite.com/10162-architelos-launches-new-gtld-anti-abuse-tool
Kevin Murphy says
Ahem. August 2012 I mean.
John Berryhill says
Doesn’t matter.
If you do a date-bounded Google search, the following result was retrieved by Google in August 2010:
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Intellectual property Attorneys Los Angeles – Cotman IP
http://www.cotmanip.com/ip-attorney-los-angeles.php
Aug 21, 2010 – Intellectual property attorney at Cotman IP Law Group brings proven success in … NameSentryâ„¢ and CopyGuardâ„¢ secure your IP throughout its lifecycle.
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If Architelos’ attorney was operating on auto-pilot, then the firm had best check if their malpractice policy is up to date. There’s no excuse for this. Architelos gets to pay legal fees against an opponent operating on their own dime with a definite prospect of getting triple their full billing rate back. That’s nice work if you can get it. It is often said that practicing law would be a lot easier if it wasn’t for the clients.