Cease and Desist from different county

games4fun

Hi everyone,

So i recieved a letter that was fedex with signature confirmation from the uk regarding a cease and desist letter. Im in the usa and in the letter it wanted me to remove my app from the app store and also from my website. I looked at the letter and they have a trademark in the uk for the same name however its really not the same thing as theres is video releated stuff. Can I just remove the app from the uk store and thats all? Any advise?

Thanks

TouchTiltGames

Hmm..how is their service compare to yours? Is there's an app or game?

The_Gamesalad_Guru

I would consult a lawyer as some trademarks stand in both countries and if they spent the money on a trademark, as it's very expensive to do, they may have trademarked it in the US as well.

Steverd

What name is in dispute? Games4fun?
If so, it does NOT look to be trademarked in the USA.
Unless the trademark search engine I used was wrong.

games4fun

I checked the usa trademark search and its not trademarked in the usa however the term is in the uk. Can't i just remove the app from the uk app store. There not even a app developer there a video production site and think people can get confused because of the same name.

Clouds

I can't see how you (as an app developer) could impinge on their business if they are in video production . . . . . unless they plan to start making apps ?

gyroscope

Yes, as @Tynan says; have you checked in the Companies House register, (if thats what its called, I can't quite remember) and it's there; so that's what you mean by "the term in the UK"? If so, then they are properly registered but if not, I reckon they are pulling a fast one, in my opinion.

But even if it is genuine, I'm almost certain (although I'm no lawyer, of course) that what you say, about taking your app and therefore your company name off of the UK store would be enough; if they aren't registered internationally then they have no jurisdiction over where you use the name outside of the UK. (But please, don't take my word for this; it'll need professional confirmation perhaps...)

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iPad app: End of the Earth –•– http://davidgriffinapps.co.uk/
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Rob2

What is your app called ?

The_Gamesalad_Guru

This is a prime example of why as I say this is a business and the guys with the money will spend money to defend their turf. This is why app developing is a fun hobby but remember most developers are investing lots of money and do this for a living. They don't care if you're a nice person or not, if they feel it necessary business' like this will sue you. This is why I try to stress to people, read the itunes connect developer guide and Apple developer Guide and know what you're signing on to. That's why if one is serious he or she should be an LLC or S-Corp to protect yourself. It's a fun hobby until you step on someones toes. And It doesn't matter if they want to develop app or not, they have the right to that name and reserve the right to use it for app development or any other related service in their business overview. As you said they are a media company, I'm sure their lawyer made sure he secured rights in all forms of digital media as is a common rider to such things. We have trademarks that cover all form of media, print, electronic, television, film, et.... If someone infringes on our trademark we would sue them as if you don't defend a trademark the courts can sometimes rule against you for apathy to your trademark. What is most common is their lawyer will take it to a point where you have to get a lawyer and most people fold at that point as trademark lawyers don't come cheap.

Steverd

OK, so what if you do not sell the app in the UK?
Oh, is that even possible?
AND what if you Trademark the name in the USA then what happens?
I saw an offer to trademark your name for only $150, not show how legit the
website is?

Steverd

@FryingBaconStudio, your post is so true, and even made my heart raise a little, arghh
I've always been a sole proprietor for my last three businesses, but an LLC does look good for
personal protection.

Sometimes it's easier and cheaper to change the name.
Remember when ePig had to made a name change last year?

The_Gamesalad_Guru

I can tell you trademarks, which is what you need for a name, costs thousands of dollars.

Steverd

Yeah, I 'thought' that sounds too good to be true!!!

The_Gamesalad_Guru

That might be a copyright as they are about that much but that only protects written works not just a name. So if you wrote a book and gave it a title you are cover as it is part of a written body of work but for a name alone you need a trademark and a unique way it's displayed and lots of counter variations. I hope everyone is paying attention and taking this as a lesson. You might be next! I see people all the time who haven't read the itunes guide and I wonder how they keep their numbers and are properly paying their taxes....Hmmmmmm Don't forget about Mr. IRS he's even worse as he can freeze your bank accounts and put a levy on your paycheck.

bloomer

Something that's probably a good idea when you're coming up with your app name is simply googling that term (in quotes) to see if it exists at all online, and if so, in what forms/capacity. Then you can make a more informed decision about the wisdom of your choice, and in some cases dodge trouble with a simple name tweak or change. That doesn't future proof you against some major company later wanting to trademark that name for themselves and then bugging you, but it's better than taking a name that already is owned by a major company, or even a smaller company I recommend the same strategy for anyone coming up with a name for a band.