Below are the email exchanges between the "EDEN FOOD" attorneys and me, who sadly, was tasked with trying to allow her to keep her store name.
Looks like I'm going to be disbarred from legal practice. But, since I never went to law school or got my JD, I guess it shouldn't hurt too much.
enjoy!
First shot across the bow
My wife asked me to respond, so I did.
| from: | Glenn Fishbine glennfish@gmail.com | ||
| sender-time: | Sent at 5:37 PM (GMT-06:00). Current time there: 5:29 PM. ✆ | ||
| to: | BDavis@wileyrein.com, CKelly@wileyrein.com, ksikorapanza@wileyrein.com, mpotter@edenfoods.com, jhughes@edenfoods.com | ||
| date: | Fri, Mar 9, 2012 at 5:37 PM | ||
| subject: | Your Ref.: 79543-001 |
Mr. Kelly,
Thank you for your letter addressed to Ms. Flaherty.
It has been passed to me for resolution.
I am sure that you are well aware of the standard of "likelihood of confusion" described in Polaroid Corporation v. Polarad Electronics Corporation, which is the basis of your concern.
I am sure you are also aware of the "fair use" doctrine, specifically the affirmative defense that Ms. Flaherty is not using the term as a mark, but rather as a fair and good faith description of the good attached to it.
As you have noted, Ms. Flaherty operates from Eden Prairie, Minnesota, which from an affirmative defense perspective gives legitimacy to her use of the word Eden. Granted the 261 live trademarks for the word or phrases using "Eden" there must be some other standard beyond your citation of live marks which establishes a likelihood of confusion thus making your request reasonable.
I might point out that there is no similarity between logos used by your client, and those used by Ms. Flaherty. There is no similarity between look and feel of stores or products or product descriptions.
In fairness, we concede that Ms. Flaherty's store does in fact offer 97 products produced by your client, of the 11,000 in the store, and we will gladly remove those from our store catalog without complaint.
However, in the other matters you assert regarding possible confusion, we feel comfortable that any action warranted beyond removing your products from her store, there is no basis for any likelihood of confusion.
I would be willing to discuss this matter further if you think there is any basis for further action by your office.
If you still believe your position has merit, we would further entertain the option of selling you the name and the URL so you could expand your trademark position, but we regret that at this time we believe that actions taken by Ms. Flaherty beyond those listed here are without further merit.
Thank you for your time.
2nd shot across the bow
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My reply
| from: | Glenn Fishbine glennfish@gmail.com | ||
| sender-time: | Sent at 5:38 PM (GMT-05:00). Current time there: 6:33 PM. ✆ | ||
| to: | BDavis@wileyrein.com, CKelly@wileyrein.com, ksikorapanza@wileyrein.com, mpotter@edenfoods.com, jhughes@edenfoods.com | ||
| date: | Tue, Mar 20, 2012 at 5:38 PM | ||
| subject: | Re: EDENFOODANDHERB.COM |
This is to confirm receipt of your letter dated March 19, 2012.
First, I would like to thank you for taking the time to call me to discuss this matter. As I'm sure you know most matters can be resolved by a conversation. Since you have chosen to respond via written communication rather than call to discuss this matter, then I can only construe that you might be contemplating setting yourself up for counter action under the the various malicious or monopolistic practices rulings. Rather than cite case law, I'm sure that your client would be pleased to know that your behavior might seem to be a disservice to your client.
I further note that your hourly charges for your defensive services on behalf of your client certainly exceed the all time total revenue achieved by Ms. Flaherty, further laying to rest the possibility of confusion between names. Were the name "Eden Food" of any commercial value in this context I'm certain her total earnings would be significantly greater.
As a clarification in case you wish to further waste your client's time and money, let me note that the rights regarding your trademarks, such as they are, are totally divorced from any rights you might have to URLs which you do not and cannot own nor claim. Your declining of the offer to purchase the name is a separate matter from your declining the offer to purchase the URL. They are not and cannot be linked, by again, separate case law which you can describe to your client at their expense.
Ms. Flaherty fully understands the position represented by you on behalf of Eden Foods and as a recognition of your obvious financial strength in pursuing this matter from a position of a large and powerful company intimidating or harassing a smaller company, Ms. Flaherty has changed the LOGO of her store and the name of associated links to her store. The word "Eden" has been exorcised.
This is not an admission of acceptance of your position. This is an admission of your ability to outspend and harass Ms. Flaherty who has better things to do than deal with corporate bullying.
We consider this matter closed and have deleted all Eden Foods products from her store.
Have a nice day.
Glenn
I guess I pissed him off. cc'ing the CEO and CFO of his client. Well, they should know shouldn't they? So he sent this.
| from: | Kelly, Christopher CKelly@wileyrein.com | ||
| sender-time: | Sent at 5:49 PM (GMT-04:00). Current time there: 7:34 PM. ✆ | ||
| to: | "glennfish@gmail.com" | ||
| date: | Tue, Mar 20, 2012 at 5:49 PM | ||
| subject: | Re: EDENFOODANDHERB.COM | ||
| mailed-by: | wileyrein.com |
Mr. Fishbine: We will review the changes and follow up. In the meantime, please let me know the jurisdictions you are admitted to practice in order for us to register appropriate objections to your insistence on communicating with Eden Foods directly. I look forward to hearing from you. CK
