So you started your new business, trademarked your name, and kept Googling it to see how you rank on the Internet.
Then one day, it happens. You find someone else is using
your trademark. And worse, they’re in the same line of business as you are!
“How can this be?” you cry. “I paid good money for my trademark. It’s on all my business cards. It’s on all my letterhead and now they dare use it on their title page?” Is there no decency? Why would they do such a thing?
I’ll sue! I’ll call in the navy. I’ll bring back corporal punishment in high schools! My wrath will be of Biblical proportions. If they don’t take it down, the sky will darken, and frogs will bark like spiders. They shall rue the day when they tried to take from me what is rightfully mine!!!
Welcome to my world. This is exactly what happened to me a few weeks ago. And it can happen to you too. So this blog is all about finding the trademark infringer and how to police your trademark without an expensive lawsuit.
First You Must Identify The Infringer
In my case, the Sleuth For The Truth trademark was being used on a “woman owned” website called ***snoops.com (full name concealed for privacy reasons). And like me, they also did online background checks.
The infringer was slick. She never listed her name and contact information. If you wanted to reach out to her, you were stuck filling out a form on her “CONTACT” page. And worse, the domain name was a “private registration.” So a regular Whois lookup showed nothing but that it belonged to GoDaddy. She had paid to keep her identity top secret.
So following the steps in my earlier blog Expose The Business Owner Behind A Website, I found clues to who she was through the Wayback machine. But I still had no contact information.
So my next step was to do a nationwide corporation search. While it’s always smart to search for a business name in corporate filings, there are many businesses that never file as a company. Nor do they have to. However, here she had listed herself as an LLC. And I knew that all LLCs, INC.s and Corps. must be licensed somewhere.
This is where it got interesting. A multinational search for her business name turned up NOTHING. This business had no corporate filings in the US or abroad.
So this person was infringing on my trademark, hiding behind her website, and falsely claiming to be an LLC. Was there any hope of me finding out who she was? And even if I found her, how could I convince her to stop this horrible evil wrong she was doing?
The good news is I hit paydirt with the special website reverse lookups. Yes, the ones which can sometimes find even private domain registrations. And in her case, the smoking gun was an old email of hers!
From there finding her was easy. When I plugged her email address into Google and Pipl.com, suddenly I had her full name, her age, and her professional licenses. The lady had lots of pots on the stove. She was a notary, a licensed realtor and involved in many nonprofits.
A short time later it got even juicier. It turns out that my trademark infringer also works for the federal government.
This was important, as it meant she could be held accountable for things she did on her off hours. Things like falsely advertising she had an LLC, when she didn’t, and of course, her failure to respect my most excellent trademark.
My next stop was the occupational licensing boards. Always a great place to find the contact info for licensed realtors and notaries. Now I had her private cell phone number, home address, her business email and more.
It was time to act. But with great power comes great responsibility. I could do a lot of damage. But it’s just a trademark. And she should be given the benefit of the doubt until proven otherwise.
Contacting The Infringer
I’m a guy who hates conflict. And if I can, I’d like to be friends, especially if the person is as talented and driven as she was. So I emailed her at two of her private email addresses and let her know there was a trademark issue.
I never mentioned a lawsuit or that I was a lawyer. I also encouraged her to call me and indicated that I had two of her phone numbers.
To remain nonconfrontational, I gave her a few days to process this information. I then followed up with a pleasant message on her cell phone about how I would be happy to trade tips with her but she still needs to call me about the trademark issue. The next day I posted a similar message on her website’s contact form.
At this point I waited a week. And it was a very long week. But I heard nothing from her. Meanwhile I considered all the harsh things I could say. Things that if I wasn’t careful, could get me into trouble.
Legal Reasons Not To Be Nasty
I could talk all day about the golden rule and do unto others. But the fact is that many of you just don’t care. You want the job done and may even feel it’s your corporate duty to be a hardass. Fine.
But if you’re too much of a hardass, it could backfire. Courts hate trademark bullies. Put enough heat on the infringer and you could find yourself being sued as a defendant.
Yes, if you threaten to sue them, make over reaching claims as to what your trademark covers, or start contacting the infringer’s clients, they could file a declaratory judgment against you. And suddenly you become the defendant, and they are the plaintiff.
So if you weren’t ready to sue or wanted to sue in a nice and friendly jurisdiction, suddenly you’re in their home court and forced to present your case NOW and in hostile territory!
I believe in the Golden Rule. I’d play it nice. (And there was no way in hell I’d be stuck in central Louisiana!)
Using Their Public Image To Keep Them Accountable
I was pretty pissed she never contacted me. And I knew where she worked. I also knew that because she was a notary and a realtor, her reputation with her licensing board was critical. Falsely claiming you’re an LLC when your not, would not sit well with them.
To treat her with dignity and avoid defamation, I didn’t call her names. I just spelled out the problem and gave her guidance how she could make it well and good again. I also implied that she could get into a lot of trouble if she didn’t stop what she was doing. But I made no outright threats.
I told her I’ve posted this letter (with her name and contact info) on the Internet. I emailed her the link and explained that if I didn’t hear from her, this post may remain online indefinitely.
She responded in a few hours. Two days later she removed my trademark.
Here is the letter I sent to her workplace and posted online. Since she did the right thing, names and places have been changed to protect her privacy.
US Dept. of Energy
495 Shreveport Highway
Houston, TX 17136
November 3, 2017
I was hoping we could resolve this with a phone call. However, in spite of my earnest attempts to contact you, it appears you have no interest in getting in touch with me. I have reached out by phone and left a voicemail, I’ve posted to your website and emailed you at two of your other email addresses.
It is only as a last resort that I am now emailing your workplace. To undo the damage already caused by the misuse of the Sleuth For The Truth trademark, I am also posting this letter online at sleuthforthetruth.com.
If you desire to resolve this matter amicably, please call me at 678-587-9228.
President of Sleuth For The Truth
(Blog Title that will appear in Google:)
Sally Surrah (AKA ***snoops.com) Please Cease & Desist From Using The Sleuth For The Truth Trademark
The website address ***snoops.com has been traced to you through your old email firstname.lastname@example.org. There is no question that this site belongs to you.
You are running a business off this website called I am stealing your trademark, LLC which among other things, specializes in document retrieval, investigations and background checks. It is also
operating in violation of both state and federal law.
As a business owner myself, I feel you should know of at least two concerns.
1. You have falsely designated your business as an LLC even though you have never registered with the Texas Secretary of State. In fact, I have been unable to find your business “I am stealing your trademark, LLC” registered anywhere in the US or abroad.
Passing yourself off as an LLC when you’re not is a violation of Texas false advertising laws. See Sec. 71.05 _ _(Assumed name restrictions).
Given your background and accomplishments, I am somewhat puzzled by this oversight. You are a detective, a licensed realtor and you work for the United States government. You are also highly educated and have a background in law enforcement. So if there’s anyone sensitive to the law, hopefully it would be you.
For your own peace of mind, and to comply with the law, I suggest you remove the “LLC” designation. However, this is between you and the state of Texas.
Unauthorized Use of The Sleuth For The Truth Trademark
2. As you must know from my numerous attempts to contact you, ***snoops.com is using the Sleuth For The Truth trademark without permission from Sleuth For The Truth, Inc. I have reached out to you twice by email, once on your website’s form page and once by phone.
Each time, I’ve referred to my registered federal trademark and asked you to call or email me. However, I have received no response from you.
Your failure to get back to me is not a good sign this can be resolved amicably.
By law, I am required to actively police the Sleuth For The Truth trademark. If I don’t, it means I could lose the right to enforce it.
I can understand your desire to post controversial opinions while concealing your identity. However, being anonymous does not mean you can blithely ignore federal trademark law.
Although ***snoops.com was filed under a private domain registration, I was able to trace it back to you because of your email email@example.com. Your ownership of this website has also been confirmed in various other ways.
Proper and Improper Use of Sleuth For The Truth (See Screenshots Below For Further Guidance)
As I’ve explained in an earlier email, I do not have a monopoly on the words “sleuth for the truth”. For example, you are free to use “sleuth for the truth” in a sentence such as “We sleuth for the truth.”
The problem occurs when you start using it as a brand name. The more it stands alone, is in big print, bolded or in caps, the more likely it will be seen as something that identifies your services. You also run into similar trademark issues when Sleuth For The Truth is being used in your title.
In your case, the misuse is even more serious. For you are a business that also does background checks. So you are using the same brand name, for the same services, and we are being found on the Internet by the same people.
This is a recipe for confusion in the market place. Please see Screenshot #2 which shows how SLEUTH FOR THE TRUTH is being misused as a brand name.
(See Screenshot #3 for how this appears in Google, See Screenshot #4 for the actual HTML code on your website)This is extremely misleading to the general public. It means that people who Google for Sleuth For The Truth will see a link to your site titled SLEUTH FOR THE TRUTH I am stealing your trademark, LLC.
But once they click on this link, they see your title as something entirely different. The catchy words of my trademark vanish from the screen and do not appear in your title. They can only be seen in Google.
So it looks like you’re doing a bait and switch. Google shows one thing. Your site shows another. And my federal trademark is used as the bait to lure consumers to your business.
While you may not have meant to misappropriate my trademark, adding SLEUTH FOR THE TRUTH in your title code was done on purpose. It was not computer generated.
As you can see from Snapshot #4, the phrase Sleuth For The Truth was intentionally embedded in the HTML. If it were otherwise, your title on the site would appear exactly like it does on Google (see #3.)
Put another way, somehow the code was made so that Google would see it, but it would be invisible on your title page. This does not happen by accident. (Compare screenshot #1 with #3 and you’ll see the difference.).
To police my trademark, and undo any damage for potential confusion, I am posting this correspondence online at
sleuthforthetruth.com for all to see.
Please let me know if you choose to comply with this takedown request. If I don’t hear from you or your representative, this post may remain online indefinitely.
President of Sleuth For The Truth
Snapshot of ***snoops.com with Misuse of LLC & SLEUTH FOR THE TRUTH Trademark