What to do if accused of trademark infringement???

[thefreshstoreNM]

Ok so i have been re-selling sneakers for a couple years now, November of 2014 i decide to open my wings and start an online business and purchase a domain (thefreshstoreus.com). Now recently (02-25-15) I was contacted on FB by a local sneakerhead claiming to own the trademark "The Fresh Store" since 2007. I did the basic whois search and found the domain "thefreshstore.com" is owned by a gentleman out of wisconsin (pretty much irrelevant). Honestly i would like my store name to be -The Fresh Store-but this sneakerhead wants 10k over the course of the next 10 years and 2% of my sales (didnt say profit). Im at a crossroads he lawyered up right away and gave me the offical "48 hours" to cease and desist or take ownership of my business threatened to take all my inventory because I am using his trademark. He doesnt own a store or website so i do not know what to make of this plz help thanks in advance i did all the searching i could but i could not find my situation anywhere thanks!

[Freelancier]

First of all, do you have proof that he actually owns this trademark? Without that, there's not much to talk about.

Second, if he does own this trademark and you don't want to fight it, you get to rebrand your store (which you've only just recently expanded). He can threaten to take everything from you, but if you take steps to rebrand quickly, his complaints that you used the brand for a short time won't get past the judge and you won't owe him a dime for inadvertent use.

[Adel Landman Steyn]

There are many trademark / copyright trolls out there.
So, first, make sure he provides you with proof that he actually DOES own the trademark.
Trademarks are also country-specific. Is this person even from the US?
He can't just threaten to take your inventory. He would need a court-order in order to seize any property - in which event, he would first need to prove to the court that he actually does own the trademark.
Actually, based on this threat, I don't actually think that he does own the trademark, otherwise he would not be using such scare-tactics. Then again, I don't live in the U.S. so I am not familiar with the specific technicalities of your legal system.
So, if he can't prove he owns the trademark, let him do whatever he wants and notify him in writing that you will apply for a court interdict because of harassment.
If he does own the trademark, you will need to re-brand, accept his terms, or negotiate terms that you both find acceptable.

[Paul]

A quick trademark office search shows that the trademark "The Fresh Store" has been abandoned for a long time.
It's original application was from a grocery store for general merchandise . Trademarks are product or service specific. That means several entities can have the same trademarked name. There can be The fresh store groceries, the fresh store restaurant AND the fresh Store sneaker store. IE: I once trademarked a name for a restaurant that also was the name of an adult store. that led to some interesting contacts!

Anyway, unless he has a trademark for a sneaker store (or sporting gear) tell him to jump in the nearest lake. In the mean time, IF your name is in commercial use you should probably trademark the name. Its not that hard to do.

On domain names there are some regs that I am not familiar with but certainly others on here would know.

Link to the Patent office search;

Trademarks | USPTO (http://www.uspto.gov/trademark)

[thefreshstoreNM]

Thanks everyone for the input i just asked the "trademark owner" for proof of the trademark. ive done some research in the past about the fresh store trademark as well and i cannot find this guy whos last name is martinez anywhere or any sign that he might actually own the trademark. now i still have about 36 hours to make my decision is that enough time to trademark my store for myself

[Freelancier]

Do you have the name of the law office that supposedly sent you the letter? A google of them might also be instructive.

[thefreshstoreNM]

not currently, he messaged me on facebook claiming to have the trademark and claimed he registered has all the paperwork and has a lawyer all of this i have no proof exists, if i still run my website with my name what can i do to protect myself in the meantime while i apply for a trademark

[Freelancier]

Your use of it is only protected via trademark laws on the date you file for it.

So he claims to have counsel, that's nice. You're doing the right steps: force him to provide proof of trademark, file for your own trademark. Otherwise, ignore him and his claims until he gets you a trademark number that you can look up on the PTO site.

[Paul]

Don't be concerned with his "deadline" of 36 hours but you should probably trademark anyway, if you can. You can't just trademark for the heck of it. You need to have the name in use. But even if you don't trademark it's the "use" of the name that actually protects it.

[thefreshstoreNM]

thanks freelancier! you give me hope, honestly part of me was thinking about paying the 120 a month for the next 10 years. One more question i did all the searches on the uspto website but am i missing any registrars or search engines he could possibly be registered under. i just wanna get to the bottom of this soon part of me thinks hes telling the truth just a abandoned trademark that could possibly be missing from the registrars for that reason is there anyway to track him i can give you his name and dob (well facebook dob) if that helps any thanks again guys i feel much more confindent now

[BizAdvisor]

What you need to do is find out (2) things:

1. How long has that "irrelevant theFreshStore.com" been active? Before 2007?
2. Find out if the sneakerhead actually registered the trademark or is acting on behalf of common law.

Reason: A trademark automatically attaches itself when used in commerce; i.e common law trademark. If the owner of the "irrelevant" site was up and running prior to 2007, then the sneakerhead trademarked something that may already be technically trademarked. Something a lot of people don't realize about registering a trademark is that just because you register a trademark, even through an Attorney, with the trademark office it doesn't necessarily mean you are guaranteed the rights.

Now, if the trademark was never registered and is only bound by common law, it is only protected in the state of the place of business. If your business is in a different state then sneakerheads... There isn't much action he can take beyond scare tactics.

[Freelancier]

My dad long ago got caught up in a trademark issue with another company. What happened wasn't that someone left a message on his (didn't exist then) Facebook page. What happened was that a law firm representing a client sent him a letter on letterhead outlining the problem to be "cured", their proof of client's trademark ownership, and the steps we would need to take to cure it if we wanted to avoid a problem. They didn't open fire with "pay us this". Same with a client's trademark issue more recently with Apple. Wasn't some manager at Apple, it was a law firm and they explained the problem and the steps they would take if the problem wasn't rectified within a certain number of days, usually 30-60.

So I'm thinking this is a scam and that the sender just needs to be banned from Facebook. :)

[thefreshstoreNM]

when i asked for proof of the trademark he said he has about 45 pages and its "complex" lmao he said his in the registrar but i could not find that anywhere do i have anyting to be worried about anymore thanks. and the domain thefreshstore.com was registered to a grocery store then one of the domain kingpins currently parked

[thefreshstoreNM]

am i a horrible person for reporting him to the law for extortion but first i need proof he doesnt own the trademark right i mean 10 grand is a serious threat

[Freelancier]

Yeah, I'd consider reporting him to the FBI, sure. I'd also report him to Facebook and get him banned from there as well. Get screen shots.

[thefreshstoreNM]

i just need to verify he does not own the trademark first right is there a seach engine or registrar im missing

[Freelancier]

No, you don't really. Remember: that's why they have the "F" in their name. They can do that for you.

[thefreshstoreNM]

so do i have anything to worry about you think?

[Freelancier]

You're in NM, you should worry about aliens landing and how long the base will last up in Taos. This? Not until you see some proof, no.

[thefreshstoreNM]

so this morning he messaged me on fb, not a letterhead in the mail. saying we didnt come to agreements if you could remove your name from all your stuff. what do i tell him or do i just continue my thing

[Freelancier]

Ignore him until he gets around to providing you proof of trademark. And continue to register your own trademark if you like. And report him to Facebook for being a scammer.

[thefreshstoreNM]

is the most convenient way to trademark the uspto website, sorry ima noobie at this, and i counter attack him without sayin anything

[thefreshstoreNM]

its offical its past the deadline he wants me to take down all my stuff should i?

[Freelancier]

Ignore him until he gets around to providing you proof of trademark. If a lawyer doesn't send you a notice requesting take-down, it's likely he doesn't have a legal leg to stand on.

[Runum]

its offical its past the deadline he wants me to take down all my stuff should i?

From what I can tell, you need to get a thicker skin and become more decisive before you are successful. If you get your biz up and running successfully someone, somewhere is going to be pissed, envious, or threatening you with lawsuits. You try to manage and run your stuff without making anyone mad and being an overall good guy but someone will still try to see how much grief you will take.

Several times you have been told to ignore him and carry on. Sounds like good advice to me. The ball is in his court, he has to put up or shut up.

You should be busy focusing on getting your sales up and running. If you have to make some changes, which you will, then handle those changes when it's time. Dont' allow this guy to be the reason you aren't successful.

Get your biz in gear and good luck.

[Paul]

Everyone is giving you the same advice so just stop communicating with him. I know it may all seem very intimidating BUT the guy is full of it. Go about your business and never open another email from him, emails are not official notice of anything legal. When you get a registered letter from a real attorney then maybe pay attention, in the mean time get on with it!

[thefreshstoreNM]

thanks everyone i have stopped responding, one last note, he asked me for my physical adress to serve cease and desist papers. but ive registered my adress a couple places online is that the last sign hes trying to steal from me jk but thanks again. your support encourages me im going to print out some fresh store letterehead today while i get my trademark

[newuser]

Who the hell conducts legal business through Facebook? For anything to be legitimate, they'd have to send you a certified letter with the firm's official letterhead before I'd take anything seriously.

By the way, what type of sneakers? I like retro Jordans.

[Fulcrum]

thanks everyone i have stopped responding, one last note, he asked me for my physical adress to serve cease and desist papers. but ive registered my adress a couple places online is that the last sign hes trying to steal from me jk but thanks again. your support encourages me im going to print out some fresh store letterehead today while i get my trademark

Do not give him your address. If he really wants it, his lawyer can get it from the proper authorities.