Usually we allow contributing writers to submit articles to Gourmet Grocery Online's blog. Today is a little different. Over the holiday season beginning in December and stretching through January (the busiest part of the year for us) we had to deal with attorneys from Harry and David threatening lawsuits against us.
As most of our regular customers know, we are a small family owned business opertated by me and my wife. We're not in a position to hire a team of corporate attorneys to fight an intellectual property issue that in my opinion is frivolous.
On December 4, 2007 we received the below email without warning or a courtesy call.
From: Miner, Kathy [mailto: KMiner@HarryandDavid.com ]
Sent: Tuesday, December 04, 2007 10:06 AM
To: contact / gourmetgroceryonline.com
Subject: Infringement of Harry and David's Trademark FRUIT-OF-THE-MONTH CLUB
To Whom It May Concern:
It has come to our attention that your company is infringing upon our registered trademark, FRUIT-OF-THE-MONTH CLUB® (U.S. Registration Nos.: 386,023, 905,212, and 1,159,530), by using “Fruit of the Month Club” in or as the title of search results linked to your company on various Internet search engines (e.g. in the “natural results” and/or or in the “sponsored links” section of said search engines) and by selling a “Fruit of the Month Club” product on your website.
Please immediately cease all infringing uses of FRUIT-OF-THE-MONTH CLUB® and any terms confusingly similar thereto, and any and all other infringing uses of Harry and David’s intellectual property. We request your written assurance by December 7, 2007 that all such infringements have ceased. We look forward to your prompt response, while expressly reserving all legal rights and remedies.
Sincerely,
Jill Silver
Corporate Counsel
541-864-5026
541-864-2885 FAX
jsilver@harryanddavid.com
At the time we received this email our fruit club was called "Fruit of the Month Club".
As a sidebar note, prior to my wife and I starting Gourmet Grocery Online, I had worked in the legal field for nearly 15 years, and owned Austin Legal Ease a litigation support firm. Needless to say I'm very familiar with the way attorneys try to strong-arm the "little guy" into getting what they want.
After reading this email I tracked down the US registration for Harry and David's trademark relating to Fruit of the Month. Here is what I found: Fruit-of-the-Month Club
As you can see their trademark has the use of hyphens in it (Fruit-of-the-Month Club). The reason these hyphens are used is because the US Patent and Trademark office probably denied their first attempts to secure Fruit of the Month Club because the term is a generic term. They could only secure a trademark with the use of hyphens. Our usage of Fruit of the Month Club did not contain hyphens. In fact when you do a search on Yahoo for this term 20,200,000 hits are found. On Google 256,000 results are received, and MSN finds 5,480,000 results.
I called Jill Silver in an attempt to resolve this issue, and explained our position. Their argument was that the hyphens did not matter. What else should I have expected... She threatened a lawsuit if we didn’t change the use of the term. Much to my disliking we decided to succumb to their demands only because (1) it was the Christmas season and we wanted to devote all of our attention to our customers, and (2) hiring a team of attorney’s would not be cost effective to us or our customers. Although this is a fight I would love to take on.
We ultimately changed the title of our product to "Fruit Club of the Month". I thought this would be the last we would hear from Harry and David and their attorneys.
However on December 20, 2007 (our busiest day of the year) we received this email:
From: James Geringer [mailto: james.geringer@klarquist.com ]
Sent: Thursday, December 20, 2007 10:17 PM
To: contact@GourmetGroceryOnline.com
Subject: Trademark Infringement -- FRUIT-OF-THE-MONTH CLUBR
Importance: High
Shea McClure, contact / GourmetGroceryOnline.com
Gourmet Grocery Online
Dear Mr. McClure:
We are trademark litigation counsel for Harry and David. Harry and David has referred this matter to us following your apparent refusal to cease and desist the infringement of Harry and David's famous, and federally registered, FRUIT-OF-THE-MONTH CLUB trademark on your GourmetGroceryOnline.com website, and in using that mark or confusingly similar variations thereof in the titles of Sponsored Links your company purchases on search engines such as Google. Copies of three Harry and David federal trademark registrations, dating to 1941, are enclosed for your reference.
Examples of infringing uses found today, December 20, are also enclosed. Please note that the lack of hyphens in your infringing usage is no defense under applicable law; rather, the legal question is whether your actions create a likelihood of confusion. They do, and as a result, your actions are a violation of federal and State trademark, as well as unfair competition law.
While Harry and David would prefer to resolve this matter without litigation, please be assured that it will take whatever action is necessary to protect its mark and the valuable goodwill it has garnered over the course of over seventy years of marketing genuine FRUIT-OF-THE-MONTH CLUB goods and services.
Please confirm by reply e-mail that you will change your website by the end of business Monday, December 24, by replacing all infringing uses of "FRUIT OF THE MONTH CLUB" and confusingly similar variations. Should you not comply, you should not expect any further notice. If you retain an attorney to represent you in this matter, please have your attorney contact me immediately. Harry and David reserves all rights in this matter.
James E. Geringer
Klarquist Sparkman, LLP
503-226-7391
cc: Harry and David
Once again I picked up the phone and called Mr. Geringer. I basically stated that although we disagree with their contentions, we would remove the items requested. Mainly for the previously mentioned reasons. I then made further revisions to our fruit club.
We ultimately changed our club to be titled: "Gourmet Grocery Fruit Club"
This is the way Harry and David competes, big business against small business. They are bullies and I have found some history with them to prove that they are bullies. They intimidate fruit club competitors and think they own the industry. A recent case was won by another competitor against Harry and David regarding the domain name www.fruitofthemonth.com that they wanted to take from the owner because they tried to claim trademark rights to it!! Well, they lost and in fact the judges mentioned the trademark they have is "Generic" (which it is, it describes what we sell). The hyphens are used so they can get it trademarked, so my contentions are substantiated We and other competitors don't use hyphens, therefore there is no infringement. They think differently about this.
See the decision won here - http://domains.adrforum.com/domains/decisions/952243.htm
After the judges decided this case, the next day Harry and David was so shocked that they lost, that they filed a federal court case in a attempt to still get this domain name and overturn the arbitration decision.
Right now this competitor has had to hire attorneys in Chicago and another attorney near Harry and David's headquarters. They are fighting this case claiming that their trademark is invalid and generic.
I encourage anyone to fight too claiming that they don't have rights to generic terms that describe what you sell. The more people who fight back claiming that their trademark is generic, the better. And this shouldn't be just for this term. Too many large companies are taking everyday words and phrases wanting the trademark them. Before too long every word in the dictionary will be trademarked.
Thank you to all of our customers who have supported us throughout the years and who have stopped shopping with Harry and David and become devoted Gourmet Grocery Online customers.
_________________________________________
National Arbitration Forum
DECISION
Harry and David v. Clubs of America, Inc.
Claim Number: FA0704000952243
PARTIES
Complainant is Harry and David (“Complainant”), represented by James Geringer, of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204. Respondent is Clubs of America, Inc. (“Respondent”), represented by Marc H. Trachtenberg, of Ladas & Parry LLP, 224 South Michigan Ave. Suite 1600, Chicago, IL 60604.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Go Daddy Software, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Paul A. Dorf, Prof. G. Gervaise Davis III, and James A. Carmody, Esq. (Chair), as Panelists
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2007.
On April 2, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@fruitofthemonth.com by e-mail.
A Response was received on April 24, 2007. It was deemed deficient under ICANN Rule 5(a) as the hard copy was not received in a timely fashion. The Panel elected to consider the Response in any event.
Both parties filed Additional Submissions which were considered by the Panel.
On May 1, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Paul A. Dorf, Prof. G. Gervaise Davis III, and James A. Carmody, Esq. (Chair), as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s , the domain name at issue, is confusingly similar to Complainant’s FRUIT OF THE MONTH mark which enjoys several USPTO registrations.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Complainant has no protectable rights in its claimed FRUIT OF THE MONTH mark for the purposes of this proceeding because the mark has become generic.
2. Respondent has rights and legitimate interests in the domain name at issue and is rightfully using the same in commerce.
3. Respondent did not register the domain name at issue and has not used it in bad faith.
C. Additional Submissions
Complainant’s Additional Statement argues that the Response acknowledges Complainant’s long common law use of the FRUIT OF THE MONTH mark and that Respondent is using the domain to sell goods in direct competition with Complainant.
Respondent’s Additional Submission argues that Complainant had no legal rights in the FRUIT OF THE MONTH mark at the time Respondent purchased the domain name at issue and began using it and that the claimed mark is generic and cannot serve as a trademark.
FINDINGS
Harry and David is a nationally famous retailer and premier direct marketing and e-commerce company operating over 130 stores nationwide. Harry and David sells gourmet fruit and food gifts in part through its “FRUIT-OF-THE-MONTH CLUB” mail order services. The company began its Fruit-of-the-Month Club® program in 1936 and has continued it ever since.
Complainant’s three incontestable federal trademark registrations are valid and in force. Their details are summarized in the table below:
Mark
Registration Number
and Date
Goods/Services
Reg. 386,023
(March 25, 1941)
IC 031. US 046. G & S: Fresh Fruits-Namely, Pears and Grapes;
FRUIT-OF-THE-MONTH CLUB
Reg. 905,212
(Dec. 29, 1970)
IC 029 030 031. US 046: fresh, [canned,] dried and candied fruits, fruit preserves, unshelled nuts, cheese, [tea,] candy, and gift packages containing one or more of the listed items
FRUIT-OF-THE-MONTH CLUB
Reg. 1,159,530
(June 30, 1981)
IC 042. US 101. G & S: Mail Order Services in the Field of Food Items
Respondent, Clubs of America, started operations in 1994 as a beer of the month club consisting of 35 members. Today, Clubs of America is one of the largest “Gift of the Month Club” service providers in the United States with over 20,000 members. Clubs of America offers eight very popular clubs including a fruit of the month club, beer of the month club, wine of the month club, coffee of the month club, and pizza of the month club, in which products are sent once per month to members.
Respondent did not register but acquired the domain name in dispute in March of 2002, over five (5) years ago, and has consistently used the domain name to direct Internet users to its main website located at .
Respondent is one of many providers of fruit of the month clubs as evidenced by a Google search for “fruit of the month,” which returned 71,400 results. There are a multitude of other third-party providers of such services other than the two parties to this proceeding.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
As noted by Respondent, although Complainant’s trademark registrations may have acquired incontestable status, this does not preclude a successful challenge to the validity of a trademark based on genericness. See Park N’ Fly v. Dollar Park and Fly, 469 U.S. 189, 196-197. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Am. Fertility Soc’y, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir.1999). A term which becomes the common descriptive name of an article or substance is considered generic and is no longer granted protection under U.S. federal trademark legislation. Park N’ Fly v. Dollar Park and Fly, 469 U.S. 189, 194. Genericness, if established, will defeat a claim of the complainants’ trademark rights, even in a mark that is the subject of an incontestable registration. See Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000).
In order to determine whether a designation is generic, courts generally consider: (1) the class of goods or services at issue; and (2) whether the relevant public understands the designation primarily to refer to that class of goods or services. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir.1986). In this case, the goods and services at issue are a club that delivers fruit by mail on a monthly basis. The relevant public is comprised of consumers who may want to purchase such services or items, typically as monthly gifts to others. The Internet search evidence presented by Respondent to this Panel clearly demonstrates that the relevant public understands “fruit of the month club” to refer to providing fruit on a monthly basis as a class of goods and services. Many of these results are websites belonging to entities other than Complainant and Respondent which offer their own fruit of the month clubs, among other gift of the month club services.
The Panel finds that the domain name is essentially identical to the FRUIT OF THE MONTH mark claimed by the Complainant to be one of its protected trademarks. However, very ample evedence has been presented to the Panel that “fruit of the month” is a generic phrase used very extensively by very many merchants in the periodic sale of fruit to the public.
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
Rights and Legitimate Interests
Respondent is using the domain name for the purpose of operating a website in connection with its business of offering various products “of the month” for sale. In 1994, Respondent started the “beer of the month club” with thirty-five members. Since that time, Respondent’s business has grown to over 20,000 members and has expanded into several different clubs including wine of the month club, coffee of the month club and pizza of the month club. In March 2002, Respondent purchased the domain name and has since operated a business in which subscribers receive a monthly basket of exotic fruits in the mail. The domain name describes the business in which the Respondent has engaged for five years prior to the commencement of this proceeding by Complainant. Respondent’s extensive use of the domain name in connection with a bona fide offering of goods or services demonstrates that it has rights and legitimate interests in the domain name at issue. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”); see also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name).
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent has established rights and legitimate interests in the domain name through its use in providing “fruit of the month” services to members, and this precludes a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name
to lead consumers to a source of lowest fares in good faith).
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
DECISION
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Paul A. Dorf
Prof. G. Gervaise Davis III,
James A. Carmody, Esq., Chair
Dated: May 22, 2007
