Trademark Advice/Help

Over the past 8 months, I have been involved in conversations that involve trademarks and rights to my business name.  I’ve been a semi professional photographer since 2002, when I started with Crux Photo.  I purchased the domain name, did a quick check to make sure no one (at least not on the internet) had that name or a similar one, and developed a website.  Since then, I have been slowly promoting that name, along with my own, and my business has slowly grown.  I’ve done work for companies all around the US, as well as Ireland, Czech Republic, Japan and England.  Although I would have liked to grow faster, I am a full time bio-medical engineer, and only have weekends, evenings and mornings to build my business, but that is even shared time with a house, yard work, family and friends. 

About 8 months ago, I found someone through search engines who is/has developed a business named Crux Photography.  His name is Chris Rojas and he is a young, and very good photographer from the Denver area.  He shoots a combination of skiing, climbing, portrait and architectural photography.  I found this when I did a search for Crux Photo, and a few of his profile names came up.  He uses both cruxphotography and cruxphoto as profile names and cruxphoto@gmail.com is his email address.  In my initial research using whois data, I found that the cruxphotography domain name was originally created on March 31st, 2006 compared to my original name which was created on March 29th, 2003.  My concern is that his name is similar and confusing enough that someone may end up at his site, rather than mine.  I have a few ads here and there, including in Urban Climber Magazine, and someone could easily search for cruxphotography rather than cruxphoto. 

Although my name is not a registered trademark, it is protected by federal law against confusing and similar names, see the Lanham Act, 15 US Code sections 1125 and following.  Because both Chris Rojas and I shoot nature and sports photography, this could lead to confusion of potential clients seeking my work.  I am lucky to have a family friend who works at a top law firm in Chicago, and specializes in trademark law.  He said that I clearly have a case, and has actually spoken a few times with Chris Rojas.  I am going to give you a quick history of our interactions over the past 8 months. 

In March, 2007, I originally contacted Chris Rojas about the name issue.  I was initially seeing if we could collaborate since we had the same name, and potentially get more business. I could handle Utah and he could do Colorado.  He was also in the process of trying to work on a book with lots of photos and adventures, and I was thinking I could contribute to that with photos from Utah.  He was open to me contributing to the book (1 or 2 pictures, so not much), but he also wanted a lot of effort on my part in marketing the book.  Considering he was infringing on my name, I didn’t see how me promoting a book that was mostly his work was quite fair.  Within a few emails he said:

“So what’s next? How concerned are you? Once my lease is up on this domain I plan to move onto another one since it doesn’t sound like you want    to collaborate on a project and our common name doesn’t seem to make you very happy. So, can you wait six months to a year for me to transition over to another domain/company name? Or is it so crucial that you believe I must give up the domain right now? “

I said that 6 months would not be a problem.  6 months later, he had not changed anything, and was still active in growing his business under the Crux Photography name by adding profiles and signing up with companies like Imagekind and others that sell and display art work of photographers.  When I contacted him about not changing his name, his response was that he had talked to some lawyers, and did not feel he needed to change his name, and then offered:

“I’ll sell all rights to the name and my website for $5,000. I figure that should cover the cost of re-establishing my network.”

Even though he had admitted:

“All my contacts I have met in person then later referenced to my site.”

Which in my mind means that it was be very easy to re-establish his network.  In consulting with the trademark lawyer, because he offered to sell me the domain, that technically makes him a cyber squatter which carries heavy penalties if he is taken to court.

So here lies the question/advice/etc.  My lawyer and I have contacted Chris Rojas about the infringement situation.  Chris has refused to discontinue using the name, and even insulted my lawyer.  He offered to point out the flaws in his argument, and then quickly reneged and said that he wouldn’t waste his time.  From what I can tell, he’s trying to call my bluff.  I have tried contacting the companies that he has profiles in, and most of them will not do anything without a court order.  I really don’t want to go to court, both for me, and him.  It would cost us both a fortune, and essentially run us both into debt that we do not need.  It also seems silly.  Although there may be only a hand full of times someone has been confused, if Chris continues to grow his business (he wants to do it full time), he will eventually have enough contacts and links and activity that when you search for cruxphoto, you’ll get cruxphotography the first link.  Being part time, it is difficult enough to pick up clients, let alone to have to fight against another photographer using the same or similar name. 

So first, any advice?  Am I silly for even worrying about it, or is this a legitimate concern?

 As for help, I’m hoping that there is someone out there that actually knows Chris Rojas.  He lives in the Denver area, and works for the Metropolitan Newspaper as a photographer.  He is also going to going to Metro State College of Denver for photo journalism.  If you know Chris, please sit down and talk with him.  Maybe he has a valid point to his argument but is having trouble communicating with me.  But I am hoping that someone can convince him that he should probably change his name, not only because it is the right thing to do, but also because he probably doesn’t want to deal with potentially lost business to me.

 Thanks for your time, I look forward to you feedback or any additional questions.

Nate

~ by cruxphoto on September 6, 2007.