The Idea Express Group and Idea Express, Inc (IEG), a national leader in printing and distribution of numerous products, has announced that it was successful in cracking down on a newly formed company that was attempting to infringe on its trademark.
Recently, IEG discovered that a group of individuals in Tennessee had formed a Nevada LLC called “Idea Express LLC”. In addition, the group had bought a matching domain (ideaexpress.com) and were planning to market a software type of product on the domain. Idea Express Group, which has used that name since the mid 1990’s realized the use of the name and domain would cause confusion with its customers. Especially since IEG also marketed some products associated with computers.
One dead giveaway that there was indeed customer confusion was, in fact, how they first discovered the infringement. A customer called them to inquire about an email the customer had sent weeks earlier requesting a re-order. IEG customer service searched but could not find the email. It turned out the email had actually been sent to the other ideaexpress.com website. As weeks went by, more and more customers reported being confused over the other website using the Idea Express name. So the Idea Express Group’s management knew something would have to be done.
We actually knew the domain name was out there floating around,” says David Lee, Operations Manager for IEG. “A domain squatter had it and was trying to sell it for a premium, but we knew we had a longstanding trademark and a strong web presence so we never thought anyone would be foolish enough to buy it or use it for a similar business.”
And so IEG hired The Hecker Law Group, PLC, a successful intellectual property law firm based in Los Angeles. The firm immediately served Idea Express, LLC and the individuals behind it with a cease and desist order. The Nevada company’s owners refused to stop using the name. Lee states that the reasons they gave for not stopping were without merit, but that the primary gist of their response was “if you sue us, it’s going to cost you a lot of money and you won’t be able to recoup the loss from us.”
“However, we already knew all of that before we contacted them,” states Lee. “When we hired the law firm we were fully prepared to spend over a hundred thousand dollars to stop the infringement, with little chance of collecting much back on the judgment.” This is where infringers with relatively sparse assets have an advantage over operational companies. It costs the infringer next to nothing to buy a domain name and put himself in business.
No company can buy all variations of their trademarks in all of the different top level domains (.com, .net, .cc, .biz, etc). And so it can become a game of cat and mouse, with infringers buying domains and trying to eek some profit over resemblance to a name that is already familiar. Meanwhile companies who have established their name are continuously trying to gauge whether a particular infringer is blatant enough to pursue. Ironically, most of these companies would never have had this problem before the advent of the internet and domain names.
In this particular case, IEG had already determined that this infringement was blatant enough to pursue and that they had no choice but to crush it. They decided not to delay things by mailing threats back and forth and instead to go ahead and show they were serious. Without further ado they filed their complaint with the court and served the other parties.
Once the other parties realized that IEG was proceeding with the lawsuit, they reconsidered their stance. Nobody wants a judgment against them and it’s hard to predict how vigilant the winning party will be in pursuing collection of damages down the road. And so in this case, the owners of the LLC made the wise decision to move to greener pastures.
“IEG will vigorously defend its brand,” states Lee. “We have built a reputation of quality and service over many years in our industry and we certainly won’t allow that to be diluted simply because somebody thinks they’ve stumbled onto a cool domain name that was available.”
The message is clear: when considering purchasing domain names for a new business venture, always check to see if you might be infringing on someone’s existing trademark. This is easily accomplished by going to the USPTO.gov website and searching the TESS database.
Established in 1996, Idea Express Group (idea-express.com) prints and distributes products nationally and Worldwide, and are a well-recognized company offering numerous different products ranging in categories such as computer and office wares, apparel, trade show and convention supplies, party supplies and novelties.