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.
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.