21–30 of 228 posts
If that's the case and their app predates Who's Near Me, I have to say that the OP is probably going to lose this. The names and apps certainly do seem confusingly similar.
Ugh, this is crushing. Here's to hoping that someone like Grellas can find time to comment and tell you how to beat these guys. If that result isn't possible, than I ask you to keep your head up, move on, and keep building. Do your part to (soberly and safely) reduce the reputation of the founders and VC's behind this.
What if we started a Kickstarter campaign to fund the legal fees to counter-sue this company? The precedence set in a success would be profitable to the builders of the startup community. And I'd sleep better at night.
Ideas:
-Start tweeting about it & create a hashtag #WhosHereThieves
-Get in touch with the TechCrunch author who wrote about about your app. This story is a big deal
-Reddit post
-Accept donations page
-The VC probably doesn't know anything about this, but they might respond if included in all the negative PR
Ugh, this is crushing. Here's to hoping that someone like Grellas can find time to comment and tell you how to beat these guys. If that result isn't possible, than I ask you to keep your head up, move on, and keep building. Do your part to (soberly and safely) reduce the reputation of the founders and VC's behind this.
In spite of only having one side of the story I'm going to decide to choose my ground and ask this: What if we started a Kickstarter campaign to fund the legal fees to counter-sue this company? The precedence set in a success would be profitable to the builders of the startup community. And I'd sleep better at night.
Not only are you surprisingly easily manipulated, apparently, don't you have better things to hack on?
Put up something to accept donations, I'd be happy to kick back a few bucks to the cause.
Wikipedia says that WhosHere was founded in 2008 and launched their app in 2009: http://en.wikipedia.org/wiki/WhosHere If that's the case and their app predates Who's Near Me, I have to say that the OP is probably going to lose this. The names and apps certainly do seem confusingly similar.
Genuinely curious. Do you think they have owners ship of "who" in the context of a social network. Surely using such an obvious descriptive name should count give you less rights to similar names. IE If I have "The Family Teacup Company" I can't complain about "The Swedish Teacup Company."
Contact EFF.org and see if they have any pointers. Also, check with the Cyberlaw Clinics organized by the Berkman Center - they might be able to help: http://cyber.law.harvard.edu/teaching/cyberlawclinic
Unless they could somehow prove you have wilfully be continuing to violate their trademark I don't see how any damages are valid. I would certainly not give in to their threats.
What about the origins/timeline of the name and the trademarks. Who was using it first? What exactly is their trademark?
Subject to answers above, and given that this is a side project to you - I would suggest you simply write back stating you don't feel you are violating their trademarks, but would consider a rebrand in your mutual interests to avoid any potential for customer confusion provided they contributed to the cost of paying an advertising agency to create a new logo and other menu costs and estimate their share of those costs as $5,100 (eg they pay you what they are asking from you)
I sympathize with your situation and I'm sure there are a couple lessons learned here- namely that they used negotiation with email to apparently cause you to forget that there was court case pending. But saying that doesn't help you.
I've been in the situation where lawyers told me I didn't have a case, and it sounds like this is what you're hearing too-- but I think you might be missing something- you may have a case, you just haven't found it yet. The lawyers are looking to hear something that gets them excited-- something that they can really use for their profit. Since you don't have a lot of cash, the bar is higher to get them interested.
At this point, you just haven't figured out what the case is. I suspect you probably have a good one, however, if you've been running your service since 2008 or before 2010, or based on the contract they entered into with you.
If you find a case, you'll likely find a lawyer eager to take your case on contingency because both of you can make out profitably. (though of course they will settle when they realize that you have a case, but that still can be profitable.) Until you find it, though, there's no obvious case on the face of it.
This means you need to do the legwork. Start going thru every communication you have with them and organize your documents as best you can. I would strongly suggest you get a timeline going. Dig up that old agreement where you changed the name-- did they agree that doing so would settle the matter? Even in writing in an email? If that's the case, then you may have them violating a legally binding contract by bringing this case.
Build this timeline going back to the beginning and gather evidence proving each step (Eg: your receipt for registering the domain name, etc.)
Find where they have done you wrong- failing to serve you correctly is one example. You need more.
Find the relevant laws-- the cybersquatting laws give you rights against "reverse cybersquatting" where someone tries to steal a legitimate domain name.
Go to the USPTO.gov website and research their trademark application. Do they actually have one? Does it actually cover the area of what you're doing? For instance, I found a registration number 3885293 for "WHOSHERE" which shows a first use in commerce claim of 2008. Does your service predate them? Can you find evidence of you using the name "Whose near me" or whatever, including registering that domain prior to that date in 2008? How about prior to the date they filed for the trademark in 2010? When looking at their trademark, find the "TARR STATUS" button, click that, then find the "Trademark Document Retrieval" link near the top of the page, go and select all the documents for their trademark and download them as a PDF. You may find that the trademark examiner has done footwork for you, limiting their possible use of the TM, and they may be in violation of that... this will give you even more cause.
Basically, if you have been using your name prior to 2008, and can prove it, then you are in good shape. If you stared your site between 2008-2010, and they cannot prove that they started in 2008 as they claimed then you're probably in good shape. If you started your site after 2010 then you're reduced to claiming that the marks are not confusing. But you also have the fact that you already have agreement with them (and their failure to attempt to enforce their trademark rights after you changed the name of your service per the agreement) to show they've abandoned it.
The stress they are causing you, and any actions they have engaged in that are dishonest or violating the law or agreements give you cause to sue them for damages, I believe.
The odds are pretty good that they know you are young and don't have a lot of resources and they are attempting to abuse the system as a result.... simply doing this research and showing how they don't have a case may be sufficient. Like brining a gun to a gun fight-- they may think you just have a knife, but showing the gun may cause them to back off. Its no risk if they claim to have a gun and you just give up-- which is what they're trying to get you to do.
Plus, if you have a bunch of this kind of stuff, you may get a lawyer that wants to extract money from them on contingency basis-- but even if not, simply a very sternly worded letter might cost you only a couple hundred bucks, or even less.
If you find a case. I am almost certain there is one there... but you need to do your research quickly.
The first thing I would do is find what you need to do to file to request a stay or delay of the judgement and get yourself time to engage in this research.
You can call the clerk of the court where the lawsuit was filed and find out what the procedures are to file a pleading or request a stay or delay. Tell them you were not properly served, or notified about the court dates (if this is the case-- never lie-- but use what ammunition you have here) and ask what the correct filing is. They WILL NOT give out legal advice, but they can tell you the procedures, and you need to get up to speed on those so that you can get yourself some breathing room.
Good luck!
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PS-- another avenue to investigate: look for use of the term "Who's near me" or "who's here" in commerce on the web prior to 2008. One reason a trademark might be invalid is that someone else (even if it is not you) was using it in commerce in a similar way-- were there any location based services prior to 2008? did dodgeball have a "who's near me" feature?
PPSS--- Also assuming there were no location based services prior to 2008, find an extensive evidence of the common use of the phrase "whose near me" and "whose here" on the web. If this is a common phrase it may not be trademarkable, just as "thank you" can't be a trademark because it is a common english expression.
Further, if this phrase describes the feature of the service literally (which it sounds like) it is also possibly not trademakrable because it is purely descriptive. Frankly, I think they may not have a legitimate trademark, since the phrase describes the feature literally, not a service or brandable name.
I'm just going to keep adding points because I keep thinking of them.
"Whose near me" is not obviously "Whoshere" and so infringement does not seem to be a slam dunk. Further, since they contacted you previously, and you changed the name at their behest, you may have an affirmative defense because you attempted to remedy the situation. Thus this suit could be a nuisance suit. They need to show you willfully violated their trademark.
Right now, I would change your service and remove the phrase "whose near me" everywhere you can. Document this change with screenshots so you can prove you are attempting to comply with their demands-- even if they are unreasonable.
But it would seem to be hard for them to make a case when they contacted you, you responded by making changes, and then they wait a year and decide suddenly you're infringing again.
IF the company suing you is not "myRETE INC" of Delaware, then how can "WHOSHERE" have the right to the mark? Did they provide you with a license agreement? IT doesn't matter-- myRETE is the owner of the mark according to the USPTO so you can only be sued by them, I believe. (and if none of these names make sense, did they even file a TM with the UPSTO?)
A reading of their specific claims implies that there is not an infringement because finding people near you does not appear to be any of the features they claim to be using the mark for. Their list of uses, by the way was flagged by the examiner and they had to update it to get the mark registered.
Finally, it appears their mark is for "WHOSHERE", e.g. "WHO" + "SHERE" They included no space in their filing, so "whoshere" which is a "name" in the sense that it could be "bobby whoshere" pronounced "wooSHeer" doesn't sound much at all like "who's near me".
These are just ideas for which there might be a case. More digging would be required.
Finally, if you know any law students this might be just the kind of thing that is fun for them to help you research. They may help you build a case for not too much money or no money at all, and the price of beer and pizza.