Ugg, been selling the app for 1.5 years and I get a cease and desist letter today.

Discussion in 'iOS Programming' started by detz, Jan 20, 2010.

  1. detz macrumors 65816

    Joined:
    Jun 29, 2007
    #1
    I know you guys are not lawyers, I'm asking in case someone has been through this before which is plausible considering all the apps out there.


    So, apparently a company files for a trademark for the name of my app two months before I started selling it. Before I used the name I did countless searches online and found nothing so I figured it was a safe bet. Fast forward a year and a half and their trademark was approved so now they care coming after me. I did some research and I can't find any information(other than their trademark on the gov site) that this company exists at all. No products, no services, no website...nothing. They are saying that they do the same thing as my app and since I have the same name I'm violating their trademark(which I can understand I guess)

    Do I have to contact a lawyer...I would rather not but at the same time this app can make me money so I don't want to just drop it from the store and loose out. Also, what are the chances that they will seek damages?


    Also, does adding something to the name make a difference? It's on the store as XXX but my domain is XXXapp.com. So, couldn't I just change the name to XXX App or would that still violate the trademark.
     
  2. forcesteeler macrumors 6502

    Joined:
    Oct 1, 2007
    #3
    I would not worry about it unless its a big company like Microsoft, Cisco, etc..
     
  3. North Bronson macrumors 6502

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    Oct 31, 2007
    Location:
    San José
    #4
    Did the cease and desist letter come from Apple, or just from the other developer?
     
  4. detz thread starter macrumors 65816

    Joined:
    Jun 29, 2007
    #5
    From the lawyer of the person who owns the trademark(not apple). They are not a developer, as far as I can see they don't exist except for the trademark.
     
  5. North Bronson macrumors 6502

    Joined:
    Oct 31, 2007
    Location:
    San José
    #6
    I don't know. I'm not an attorney. I'm a developer. I imagine that developers will start seeing a lot of this: people trademarking names just to squat on them. Then when a *real* developer decides to create something, the person that was squatting on that name threatens the developer. The next step is to ask the developer for money. Lawyers. . .

    How much has this application made for you since it's been on sale? Would an attorney be worth it for you?

    Is your development supplemental income for you, or is it all that you do? If this is your career, you really should have legal representation because this stuff is starting to happen more often, it seems.

    Are you in America? American trademark law is very complex. My feeling is that a good attorney would be able to convince a court that since you have *actually been using* the application name, *you* are the one entitled to trademark protection.

    If you're in America, did this company file a trademark with the federal government, or one specific state?

    You can spend 300 USD (or whatever else) on one hour to have an attorney's professional opinion, or you can save the money and just keep the application on the store. Think of it like gambling.

    Do a google search for this attorney that sent you the letter. Is their office in Beverly Hills (or Manhattan), or is their office in a bad part of town? Does their website look like it cost more than your annual salary, or does the website look cheap? This might help you figure out how seriously to take their threats.
     
  6. bredell macrumors regular

    Joined:
    Mar 30, 2008
    Location:
    Uppsala, Sweden
    #7
    If they have trademarked the name I'd say you don't stand a chance of winning. Hiring a lawyer will just cost you more money.

    Just change the name of the app and the website, if your app is a good one it should survive a name change. This other company only has the rights to the name, they don't have the rights to your app or to the money you've made from your app.

    But I can be wrong. I don't have much experience from trademarks but I've been involved in patent infringements.

    Also, keep in mind that if you start fighting them they might contact Apple and you might risk being kicked out completely.
     
  7. admanimal macrumors 68040

    Joined:
    Apr 22, 2005
    #8
    Are they demanding that you stop using the name or stop selling the app altogether (which I don't think they can do unless it violates a patent and/or copyright)?
     
  8. cmaier macrumors G3

    Joined:
    Jul 25, 2007
    Location:
    California
    #9
    I am an intellectual property attorney. Since I am not your lawyer, as a matter of professional ethics I can't give you any advice other than to tell you that it would be a good idea to contact an attorney.
     
  9. firewood macrumors 604

    Joined:
    Jul 29, 2003
    Location:
    Silicon Valley
    #10
    You will have a far more complete picture of your options, and both the downside and upside risks of various options, after you discuss your particular situation with an IP attorney, assuming you find one with good communications skills (e.g. get recommendations if at all possible - the variance is far from zero.).
     
  10. spinyanteater macrumors newbie

    Joined:
    Oct 15, 2008
    #11
    I sympathise - I've had trademark problems in the past. Following what turned out to be very poor advice from a local trademark attorney, I spoke to Gene Quinn at ipwatchdog.com (gquinn@ipwatchdog.com). He was very helpful, and explained my options. I was impressed that he didn't push me into taking action and also he didn't charge anything for the advice. I'd like to emphasis though that I've no connection with the firm and I don't know anything about them apart from my experience!
     
  11. PhoneyDeveloper macrumors 68030

    PhoneyDeveloper

    Joined:
    Sep 2, 2008
    #12
    Apparently there is a software company in Germany that has a trademark on the word Memory used in software titles. That sounds crazy, and even stupid that you can trademark a common word like that but it's apparently true. This company has a bunch of desktop apps all with the name Memory in the title.

    This company sent similar letters to Apple and to all the owners of apps on the app store that had Memory in the title. Apparently Apple felt that they had to cooperate. I read about this on the Apple iPhone forum a few months ago.

    What region does their trademark cover?

    If you aren't incorporated it's possible that if this goes to court they could get a judgement against some of your property if they win.

    Sh*t like this just makes money for the lawyers.
     
  12. detz thread starter macrumors 65816

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    Jun 29, 2007
    #13

    It's in the US. I doubt that would be able to get any money since they don't actually use the name for anything, it's just trademarked. My guess would be they're planning on using it so they had their lawyer locate everyone who is using it to try and shut them down before they release it.
     
  13. mraheel macrumors regular

    Joined:
    Apr 18, 2009
    #14
    These things are scary, specially if your an independent developer..
    What if your not a US citizen/resident? will the same rules apply?
     
  14. cmaier macrumors G3

    Joined:
    Jul 25, 2007
    Location:
    California
    #15
    U.S. law applies to any sales in the U.S., regardless of whether the seller is a U.S. resident or citizen.

    Trademarks don't apply across borders, however, so you can continue to use the mark in nations where there is no trademark issue.
     
  15. PhoneyDeveloper macrumors 68030

    PhoneyDeveloper

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    Sep 2, 2008

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