Trademark Question – Anyone know more than me… advise wanted

So I got an email today and I’m not sure what I need to do so I figured the easiest thing to do would be to ask my readers since I know some of you are much more legal savvy than I am. (Please scroll down to see EDIT below)

Below is the email I got from bookblast.com telling me they had a trademark on the name BookBlast. After reading this the use of BookBlast as one word seems to be something I won’t continue to use.  However I am definitely not the only book blogger using the term Book Blast.    What about Book Blast as 2 words is that still an infringement?

And does my domain name http://bookblasttours.com really infringe on a trademark?  I’m totally willing to change what I need to change but don’t want to recreate graphics and change domain names if it is not necessary.  What about my logo/graphic on that site? It is “Book Blasts and Blog Tours” which doesn’t seem at all like a trademark infringement to me.  But I’m not in the know about such things.

I know I’m not the only one that has been contacted.  I contacted the gentlemen who runs http://booksends.com.  I came across his site while searching for bookblast online. His domain used to contain book blast as well but he changed it after he got the same email.  (If you like ebook deals check out his site and subscribe cause he’s really nice and helpful).  Has any other blogger gotten a letter from this company for using the term Book Blast? If you were in my shoes what would you do?

Please feel free to email me or comment.

Thanks!

Kathy

Re-BookBlast

Dear Kathy I Am A Reader,

Your use of the name BookBlast, and your website BOOKBLASTTOURS.COM, create the likelihood of confusion in the marketplace with our activities and incurs the risk that your business will be confused with ours, a risk
already evidenced not only by the reaction of potential investors in one of our new business ventures, but also by the fact that your site is in high positions on google.

I and this company have been using the name BookBlast in connection with
publishing, writing and agency services since 1997. My company’s name is
known worldwide in the book business; it provides, amongst other services,
B2B and B2C editorial, translation and book pr services; and we source and
promote writing and translating, and represent authors and literary Estates with US interests.

We can be found in various publishing industry handbooks and trade websites, including Writers & Artists Yearbook, The Writers Handbook etc.

In 2009, we registered the trade mark BookBlast in both the United Kingdom
and the United States of America in Classes 35 and 41 for, for example,
publication of electronic books, services relating to promotion, marketing, advertising, writers agency matters and the provision of information in relation to books. Please see attachments.

In addition we own some 23 domain names incorporating the word bookblast.
Our original registration with Network Solutions in Baltimore for
bookblast.com was made in January 2000. Our first website was launched in
September 2000 with both a trade and a consumer function with the successful objective of attracting visitors and therefore business.

As a result, we have enjoyed, and still enjoy, significant goodwill and
reputation in the name.

Our site has always been the market leader in search engines’ rankings until last year, when your activities first came to our notice when your site, BOOKBLASTTOURS.COM, started appearing on google. We have discovered that you have registered a domain name which is identical to ours and to our trade mark; and that you are using our logo ‘BookBlast’ to blog, promote and market e-books.

We believe that you have no right either to the registration or to the use
of ‘bookblast’ in any format in publishing or publishing-related matters.
We have been advised that your use infringes our rights and I hope that now the matter has been drawn to your attention, you will review that use, and then confirm to me, in writing, that you will immediately cease using the name bookblast in any competing configuration, and will take down your URL bookblast and your website using that name.

I would like, please, to hear from you within the next fourteen (14) days.
If I do not hear satisfactorily, I note that I have available to me a number of remedies, including (but of course not limited to) reference to ICANN arbitration. Without prejudice to my company’s rights, I would be willing, for a nominal fee, to take a transfer of the registration of your bookblast registrations.

Yours faithfully

Ms G De Chamberet
Managing Director
BookBlast Limited

Book Blast

 

BookBlast

 

 

EDITED TO ADD:

Thanks for those who provided counsel. This was my reply…

 

From what I have learned from the counsel I sought out is that the use of BookBlast as one word is something that could infringe on your trademark. However the term Book Blast as 2 words is widely used in the book blogging community and is not trademarked in the US and therefore does not infringe upon your rights.
Also the logo for my website http://bookblasttours.com is “Book Blasts & Blog Tours” which is unique and also not a trademark infringement.
I have begun the process of separating the term BookBlast to be 2 words on the posts that are already in existence. Please be patient as this will be a time consuming process.
Although not necessary, as a courtesy to you I will begin to list the service I offer simply as a “Blast” to avoid any possible confusion in the future. I have already updated my pricing page to reflect that change. I have also changed my site title tag to be Book Tours & Blasts to avoid any confusion between our sites.
My apologies for using your trademark BookBlast. I was unaware it had been trademarked and I will not be using it again in the future.
Wishing you the best,
Kathy

Comments

  1. How are you supposed to know if something’s been trademarked?! I would think you wouldn’t be able to sign up for a .com if it has been, but I obviously don’t know. I googled it and even Harper Collins uses it as “book blast.” The documents above show it as two separate words, so I don’t know if you could still use it. I’ve seen “book blitz” used instead of “book blast.” I wonder if you could use that one instead… I wish I could help, but I really don’t know.

  2. Inspired Kathy says:

    Thanks Katie. I’m fairly certain all is good. I’ll just change it to “book blast” (2 words) from here on out and won’t worry about it! I used BookBlast as 1 word for a hashtag on twitter.

  3. You might want to seek out Jane at Dear Author. She is a lawyer and was on the legal panel at BEA a year ago. She might have a quick answer for you. There are other promo services using the same term on their sites.

  4. I have use bookblast on my blog a few times and as a hashtag on Twitter as well. Who would have ever thought it would be a trademark. I hope you have things solved and don’t incur any more problems. I noticed in the top trademark image you posted Book Blast does appear to be separate. Is that only in that UK?

  5. Inspired Kathy says:

    The other image is UK only. Trademarks don’t carry over from one country to another.

  6. There is a database that can be searched for trademarks in the US if anyone didn’t know 🙂

    http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4802:n4a16h.1.1

  7. I found two things that concern me. First off he asks for money to take over your registrations. Basically he wants you to pay him so he can cash in on your higher ranking on google… kinda feels oily, scammy, send your money to Nigerianish… The other thing is that he clearly indicates that he believes you to be in publishing… This does not feel right to me. Have you even checked to see to the authentication of his docs?

  8. I replied and then stopped worrying about it. If I hear back I’ll look into things further but for now it’s wasted enough of my time. I am more than willing to make changes if needs be but also don’t want to go through the hassle if not needed. From what I’ve learned my site site is unique and you can’t trademark “book blast” as 2 separate words in the US as it is too universally used.

  9. Trademarks are only valid in the same industry. Book publishing and book reviewing are not the same necessarily industry. Also if you add Tours it is not the same. Website domain names are also not required to be unique. Just look up any common trademark in google, or type in GE.org. Instead of GE.com.

  10. I am unable to offer any help, but I think you handled the situation in a professional manner.

  11. Quote “a risk already evidenced not only by the reaction of potential investors in one of our new business ventures, but also by the fact that your site is in high positions on google.”

    I read this as they probably had ONE person who they were begging money from click on your link instead of theirs and they are threatened by your popularity on Google.
    Also, speaking of which, I ran a quick Google search of ‘bookblast’ and found 400,000 hits on that as well as 134M hits on the term ‘book blast’ … so I would like to see them ask for a cease and desist to EVERYONE using the term ‘book blast’ ..not just from the two (you and book send, so far) they are most threatened by.

    Quote “We believe that you have no right either to the registration or to the use
    of ‘bookblast’ in any format in publishing or publishing-related matters.”

    as some pointed out, they think you’re in publishing.

    and lastly,
    Quote: “..and that you are using our logo ‘BookBlast’ to blog, promote and market e-books.”

    they are accusing you of using their logo??! seriously!? O_o

    I think you responded in a lot nicer way than I would have. I would have requested an appropriate cease and desist letter from their lawyers before I changed anything. And I agree with possibly running it past a legal service/lawyer of your own before changing anything major.

    I also completely expect them to trademark ‘book blast’ in the US now too.

    This reminds me of when Paris Hilton tried to (or perhaps did) trademark the term “that’s hot” as well as Donald Trump with “you’re fired” .. some phrases just can’t be NOT used in certain forums and it appears that the term ‘book blast’ is possibly one of those when it comes to books and online communities.

    Good Luck to you Kathy!!

  12. This just cracks me up! I think they aren’t a “real” company or they just don’t like that you pull up higher than them on a Google search. I don’t see where you are actually in any way infringing on the trademark. Twitter hashtags definitely don’t count since everyone hashtags trademarks and whatnot – that’s kind of the point. 🙂