NewswireToday - /newswire/ -
Netcong, NJ, United States, 2010/02/08 - Ad Magic of Netcong, NJ won its case against a company in California, proving once and for all that the Ad Magic trademark does not infringe upon the California company's trademark.
A federal court jury in Newark New Jersey cleared Ad Magic Inc, a long time New Jersey based Advertising Company of infringing the trademark of a California concern with the name Advertising Magic that had demanded $450,000.00 in damages.
The jury found on January 20, 1010, that the name Ad Magic, Inc and its websites admagic.com, 4admagic.com, admagicadvertising.com, admagic-inc.com and admagicpromo.com used by the Netcong New Jersey company, did not cause confusion with Advertising Magic, Inc. of Walnut Creek California. Both companies sell products inscribed with the logos and ad messages of their clients.
Mark Ingber - of Ingber and Gelber - in Millburn NJ, Lawyer for NJ company Ad Magic, says he sued for a declaratory judgment after the California company sent his client notice of intention to sue unless $450,000 was paid and their name and all their websites were surrendered for the sum of $10.
It all began in October of 2005 when Ad Magic received a letter from Advertising Magic of California telling them that they were intending to sue Ad Magic for 450 thousand dollars and demanding to buy the admagic.com domain and business for $10. Ad Magic had acquired the domain name admagic.com from Web Perception in 2004 and launched admagic.com in 2004. Even though Ad Magic had several other sites up since 1998, the purchase of the admagic.com domain was an important event in the company's growth. Evidence established during the case confirmed that Advertising Magic also had the opportunity to buy the admagic.com domain name as well - but passed on it.
When the letter was received - Ad Magic contacted Advertising Magic - a company it had never heard of before - and tried to work out an amicable agreement. When these negotiations failed - Advertising Magic then tried to confiscate Ad magic's domain names through ICANN.
The California company tried to freeze and take over the domains of Ad Magic, through ICANN -but they were thwarted in their efforts.
ICANN (eye-can) is the Internet Corporation for Assigned Names and Numbers. Headquartered in Marina Del Rey, California, United States.
They are a not for profit international organization responsible for managing the internet's domain name system, including IP address space allocation.
They are also the body that manages the domain name system, accredits registrars, and registries.
Ad Magic - seeing the potential threat in Advertising Magic's claims - had already filed a lawsuit to clear its name from infringement - and released the lawsuit - serving Advertising Magic and stopping the ICANN proceedings - preferring instead to have the 3rd Circuit Federal District Court decide on the trademark matter. "The courts are a higher forum for deciding such matters and after ICANN the case would have wound up in federal court anyway," said Ad Magic President Shari Spiro. "Ad Magic sought to get this resolved once and for all in the court system."
Since a lawsuit to free their name had been pre-emptively filed in Federal Court in the state of New Jersey by Ad Magic, this meant that the NJ company had already moved first to sue Advertising Magic by the time that company tried to have the Ad Magic websites frozen through ICANN.
Says Spiro, “Ad Magic preferred to have the matter decided in a federal court of the Uniited States rather than through the somewhat ambiguous "international" body of ICANN. In addition Spiro added, "I felt that A federal trademark issue between 2 American companies should be decided in the Federal Court of the United States of America. I did not want some ICANN member in Australia determining the fate of my websites."
Ingber says he presented evidence at trial before US District Judge Stanley Chesler that 90 percent of Ad Magic's business comes from the sale of custom playing cards and custom poker chips, while only 1 percent of Advertising Magic's business comes from such products. He says the evidence showed that both companies operated at the same time without knowledge of each other from late 1997 through late 2005.
Says Spiro: "It took three and a half years of my life to win this - but it was a just and righteous fight. I knew I had no choice but to defend my employees and their families from the threat of another company trying to take our name. The other side thought that because they had a Trademark on their name - they could stretch it to include our name as well. I felt in the core of my being that this could not possibly be legal as the names are completely different. Much as a phone number needs to be carefully dialed in - so do website addresses. People are savvy enough to know the difference between one company and another. That combined with the fact that we paid 5 thousand dollars for the name admagic.com almost 6 years ago, and that our opponents could have bought it too but passed - led me to believe they now felt they should have made that purchase years ago and were trying to frighten us into just giving it to them."
In addition Spiro says she is freindly with Pam Dunn of Ad Magic Specialties in California - another company that sells promotional products and whose name is much closer to Ad Magic, Inc. Ms Dunn stated in depostition that she believed that there will never will be confusion between her company and Ad Magic of NJ - even though the two names are nearly identical. "It's ironic - says Spiro - that the one lady who has almost the exact same name as us - has absolutely no problem with us. We are great admirers of one another as we seem to think alike - certainly about our company names!"
Inger says insurer's paid $138,000 in litigation costs - which still did not cover all costs - and that he will now ask the court to order reimbursement from the defendant as is his right to do in this kind of case.
Ad Magic (admagic.com) has been a distributor in the Ad Specialty industry since 1998 and is also a supplier for custom playing cards and custom poker chips.