Trade Names


Spring 2004 (Vol V, No. 1) Table of Contents

 

“Book Miser” is a trade name that I purchased in 1993, when I entered the business. In addition to paying for inventory, a lease and furnishings, a significant amount of money was paid for the intangibles-the trade name and “goodwill,” principally. It didn’t take six months for me to learn that there was no goodwill (rather a fair amount of ill-will) connected with the business, and that the customer lists and ongoing training promised in my purchase contract would never materialize. Thus, I had paid some thousands of dollars for the right to use the name.

A year later, Interloc was born, and I joined the nascent ranks of online booksellers, using my trade name. Some time shortly thereafter, I registered the domain name “Bookmiser.com.” Nearly a decade later, the name identifies me as a user on Alibris and eBay, and as a member of the Washington Antiquarian Booksellers’ Association. My email address incorporates the name, albeit truncated to the allowable maximum 8 characters. I am associated with the name in several activities outside the world of bookselling. And, until recently, I maintained a web site under the domain name Bookmiser.com. But no more.

This past summer, we spent the month of August camping in Maine, with no internet connection. Upon my return, I realized that my web site could not be accessed. Checking with the web hosting service, I found all the files, and was able to bring each of them up directly, but the links from one file to another did not work. A phone call to my ISP revealed that I was no longer listed as the owner of this domain. In fact, the name would not come up at all on a who-is search. Thus, a phone call to Network Solutions was in order. After waiting the customary three-quarters of an hour on hold, I finally reached a live individual. This person helpfully informed me that the domain name had expired, and was now in a sort of cyber-limbo known as the Redemption Period. To bail out the name would cost $150, and if this were not done by a particular deadline, the name would be made publicly available. Since this conversation took place on September 4, and the redemption period expired at the end of the month, it was obvious that the thrifty thing to do would be wait until the first of October, and re-register the name, paying only the $30 or so it would cost then. After all, how much competition could there be for the name “Book Miser?”

As it happened, the first week of October slipped past without my attending to the renewal, and to my horror, I discovered another web site using my old domain name. Worse, they’ve put up a site that is a portal leading to a number of book-search services, in addition to non book-related links. Still worse, there are dead links, much of the rest of the site is incomprehensible and the site incorporates an “exit” function that opens a new window when you try to leave via the back-button. Worst of all, the new owners posted a copyright notice dated 2002.

I sent an e-mail to the new domain owner, asking that the copyright date be corrected, to remove any inference that I am responsible in any way for the current site. I’ve also informed the owners that I continue to use the trade name. Weeks later, there was no response, although at last check, the copyright notice is gone altogether. By all appearances, the new dot-com using my trade name is one of many identical sites parked on domain names that someone might find by accident. It’s a peculiar way of seeking business, a bit like catching fish with dynamite, in my view. The contact information for the new domain owner is murky, leading only to a couple of company names, rather than individual people.

But the most galling part is that this interloper was able to register the name on September 18, during the period it was allegedly unavailable! Now, the plot thickens.

Checking my files, I learned that Network Solutions never made contact with me about the expired registration. As it happened, the email address they had on file is one that I abandoned a year or more ago. But my mailing address and phone number were valid, and the site itself contained a mail-to link to my current email. An experiment revealed that email sent to the old address resulted in a “bounced mail” message. Under such circumstances, one would think the registrar would have tried some alternate means of reaching me, but there were no phone calls, no emails from the web site, and certainly no postal communication.

Surely, I thought, this oversight could be corrected. A colleague in the Washington Antiquarian Booksellers Association suggested that there were remedies available. A page calledwww.internic.com/faqs/udrp.html reveals that a process called the Uniform Domain Name Dispute Resolution Policy (UDRP) defines how disputes over domain-name registrations are resolved. This policy includes a procedure described as, “a mandatory, non-binding, low-cost administrative procedure to resolve a certain set of claims – namely, claims of abusive, bad faith registration.” Now, that’s pretty murky. If the procedure is mandatory, how can it be non-binding? A few paragraphs later, “domain-name disputes must generally be resolved in the same way as any other conventional dispute: by mutual agreement, court action, or voluntary arbitration. Moreover, without a court order or consent of the registrant, a registrar will not cancel, suspend, or transfer a domain name.” Since the new registrant has not responded to a polite email, that leaves arbitration or a lawsuit. The latter being out of the question, it was time to explore the arbitration process.

Three “approved dispute resolution service providers” exist (incidentally, don’t you just love this teetering stack of modifiers?) You can request review by either a single arbiter, or by a three-person panel. Of course, the fees for the three-person review are higher. The very least you would spend to initiate a review under this “low-cost” process would be $1,150. If the other party in the dispute wishes, your request for a single-person review will be shifted to a three-person panel, in which case the fees run as high as $4,500. As a bonus, you, the original complainant, get to pay half of the increased fee. Topping things off, the process can be expected to take several months. All this for non-binding arbitration-an expensive crap-shoot. Being Nobody’s Fool, I gave up and registered a new domain name: Bookmiser.US. As a precaution, I am putting META-tag keywords on each page, using “Bookmiser.com” as one of the keywords.

Here are a few things you might do to avoid what happened to me:

 

  • Make it your top priority to review your domain information. Not tomorrow, NOW. Go to Register.com and select a “WHOIS Lookup.” This will result in a page of information about your domain name. Check it carefully, and make any corrections needed. Make a copy of this page and store it where it can be easily retrieved.
  • Mark your calendar with the expiration date of the domain name. Better still, give yourself a heads-up about six weeks ahead of the actual date.
  • Mark your calendar with a reminder to check your WHOIS information at intervals of no more than six months.
  • Be certain to correct the domain name record any time your email or postal address changes.
  • Make a point of visiting your web site periodically, using several different browsers if possible. It’s all too easy to send files to the server by FTP and assume they will never become corrupted. Using different browsers will help you spot anything you missed in your page design that might affect the way customers see the page.

Trade name encroachment: Does It Matter?

When, as children, we played at being business-men, the name on the enterprise defined the enterprise itself. Often, the choice of a trade name is the very first step in forming a business. A trade name might reflect pride of family, the nature of the business, or some lofty aspiration (Acme, for example). This holds less true today than a generation ago; the latest crop of trade names may be distinguished by the way they provide no clue to the nature of the business (e.g., eBay, Verizon, Agoura). A former employer of mine opined that a business name ought to reflect the location and nature of the business. Thus, his shop carried not his personal name (which had an excellent reputation), but was called “Towson Foreign Car Service.” He figured, correctly, that his old customers would be motivated to find him, and that the name ought to attract new customers.

My thinking about naming a book business is that the first word of the trade name ought to be “book,” thus leading by the hand those who would turn to the alphabetical section of the telephone directory, rather than to our expensive classified advertising. Still others believe the name ought to position the business at the very beginning or tail end of an alphabetical list. Thus, the Baltimore telephone directory reads alphabetically from AAAA Action Bail Bonds to Zyzyx.

When writing about the names and their misappropriation, the temptation is almost overwhelming to quote Romeo (“What’s in a name? That which we call a rose by any other name would smell as sweet”) or Othello (“Who steals my purse steals trash…but he who filches from me my good name robs me of that which not enriches him, and makes me poor indeed.”) Although these quotations have become cliches, they illustrate the visceral attachment of a person to his name.

For some time now, encroachment on trade names has been an ugly fact of life. Stories abound about the crushing of the innocent by some juggernaut, the sad fate of a dissenting family member, or a decision made in haste and regretted at leisure. The number of tales about the Disney and McDonald’s companies crushing some innocent local business has reached the proportions of Urban Legend.

One especially outrageous instance happened here in Baltimore a few years ago, when a restaurateur was deprived of the use of her personal name by an electronics company. Sony Motoyama, a Filipino, had for several years run a successful eatery under the name Sony’s. When an overreaching staff lawyer at the electronics company got wind of this, the restaurant was forced to change its name, despite the fact that Baltimore’s Sony in no way competes with the multi-national corporation. Motoyama faced a choice between spending precious assets to defend a claim to her own name, or moving forward in the hope that her reputation would follow her, whatever might be inscribed on the door.

If you peruse the labels on wines produced by the Bully Hill Vineyard, you’ll discover that the proprietor has been forbidden by the courts from using his own name. The vintner is Walter Taylor, a member of the New York wine-making family which sold its identity to a large corporation. As the dissenting member of the family (the only one who wished to continue to pursue the family business), Walter got the short end of the stick.

In the motorcycle industry, Craig Vetter became known as the designer and maker of fiberglass “fairings,” those bits of bodywork that shield a motorcyclist from the elements. In a spectacular bit of hasty judgment, Vetter sold his trade name to a former employee, figuring to retire. A year later, when retirement proved not to be the bed of roses he’d expected, Vetter discovered that he was not only unable to trade upon his considerable reputation, but that if he re-entered the cycle accessory business in any way, he might find himself in breach of his contract of sale.

And perhaps one of the most spectacular trade name cases involved not a name, but handwriting. Chris Coyle, an enterprising independent real estate broker, made quite a splash in the market in Anne Arundel County, Maryland. Enough so that after around five years in business, he received a lucrative buyout offer from one of the large regional firms. Coyle’s trademark was his signature, which appeared on all his signs and literature. The buyout included a non-competition clause, which forbade Coyle from again using his name in the business in Maryland. After less than two years, Coyle grew bored with retirement and decided to open a new brokerage in the same area. Since he couldn’t use his personal name, he dubbed the enterprise “Champion Realty,” and adopted the trademark comprising the company name, in his easily recognizable script. The paint was hardly dry on the signs before he was sued by the company that had bought him out, claiming trademark infringement, merely because the handwriting was recognizable. Coyle pressed his case and won, but at considerable expense.

In the old-book business, profitability is uncertain in the best of times, and does not permit prolonged and expensive legal battles over trade names. Often, someone borrows a trade name unconsciously, just because it sounds so darned good. A couple of years back, I discovered someone using “Book Miser” on Half.com. Predictably, the company would do nothing to mediate, and my frustration spilled over into a discussion thread online. A week or so later, Terry Laing revealed her identity as the interloper. She’d been reading the discussion with great interest, and to her horror, realized she was at the center of it! We sorted things out and have become fast friends, learning that we live only an hour’s drive from each other. Terry is active in WABA, doing business under the name Books and Spirit.

Shirley Bryant reports that she had discovered someone else doing business as “Authors and Artists.” Fortunately, that person agreed to change his ABE and Alibris information to eliminate possible confusion. But we’re not always that lucky. Trademark protection is not guaranteed, even by registering the trademark. You must affirmatively defend your trademark against all encroachments, in the hope that when The Big One comes along, you’ll succeed. For Disney, Sony and McDonald’s, it’s a relatively small matter to assign a staff attorney to attend to trademark problems. We booksellers don’t have that luxury.

In the long run, perhaps it’s easiest to use your own name as your trade name. While the Vetter and Taylor cases show the downside of this, in practice very few booksellers manage to sell their business name. Some of our most venerable booksellers have traded under their own names. Especially online, brand-names don’t seem to matter, and developing a brand-name identity in the babble of the Internet seems an exercise in frustration. The key to business longevity has always been repeat customers, and I don’t think that is about to change. We are creatures of habit. Our energies are best devoted to a personal relationship with each customer that makes it easy for them to develop the habit of returning to us for another purchase.

 Stan Modjesky 

bookmisr@valinet.com

The Standard: The Journal of the Independent Online Booksellers Association

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