It appears that the major complaint TWI has with me is not the domain name. That's right.
TWI's claim of copyright infringement is mainly for the old website design of The Path of Christ Ministry. For a few months, it was called The Way Of Christ Ministry about 1999.
I will need to read the lawsuit again to make sure, but the 48 page complaint seems to have this as the real "offense" that TWI alleges I committed.
It might be a good idea to know what the heck you're being sued for, before you go spouting off about how you're going to win the suit and expose "damaging or embarrassing" facts about TWI in the process.
An even better idea would be to consult someone (a lawyer) who can give you some decent advice.
Pat, on the legal front I really do bid you Godspeed. I don't know what else to say: it's not like I'm all fond of TWI and want to see them win or anything. Far from it.
By the way, thanks for the PT. It did shed some light on the issue. Their motives are, unsurprisingly, despicable.
Your legal rights may well entitle you to a fat paycheck. As you point out, TWI specifically ignored advice to grab the domain name well before you bought it. That arrogance will cost them, I'll bet.
But I guess I'm coming at this from too much of a "sermon on the mount" attitude. If this doesn't call for an application of "turn the other cheek" and "love your enemies," I don't know what does.
quote:Matthew 5:25-26, 40
"Settle matters quickly with your adversary who is taking you to court. Do it while you are still with him on the way, or he may hand you over to the judge, and the judge may hand you over to the officer, and you may be thrown into prison. I tell you the truth, you will not get out until you have paid the last penny.
And if someone wants to sue you and take your tunic, let him have your cloak as well.
Yes, I understand that these verses are hyperbole, and that we really don't empty our closets for every shmoe who comes along with a frivolous lawsuit. But dang, what does this advice mean if it doesn't apply in this case?
I know, I've given an allegedly "Christian" opinion on a message board that is not strictly "Christian." I understand that people are entitled to their opinion and will vehemently disagree with me (even good Christians will disagree with me, I'm sure). But that's the reasoning behind my opinion.
There are plenty of fights worth fighting against TWI. In my humble opinion, this ain't one of them.
The main issue is their allegation of trademark infringement for using "The Way" in any religious context or otherwise because TWI owns this phrase.
Oh, bull! There's no way it's about "using 'The Way' in any religious context or otherwise." There are hundreds of registered trademarks that include the words, “The Way.” At least eight of them are trademarks of organizations, other than TWI, with religious purposes. “The Way International” appears in no registered or filed trademarks, except those of TWI.
Regarding TWI trademarks, you might want to do a little more research. “The Way” is one trademark of TWI, but not the only one. TWI has used “The Way International” as a trademark for over twenty years. For most of that time, it was not registered but it clearly was a trademark, something that a reasonably observant and competent person associated with TWI would know. Moreover, the words, “The Way International” were part of a registered TWI trademark (serial #2151377) when you acquired the “www.thewayinternational.com” domain. TWI filed the design and words of THIS LOGO as a trademark in 1996. The registration process was completed in 1998.
To see a list of TWI’s trademarks, go to www.uspto.gov. On the left side of the page, under Trademarks, click Search. Choose New User Form Search (Basic). For Search Term, type “way international” “new knoxville”. (Use the quotes and don’t type “the way international”.) For Field, choose Owner Name and Address from the drop-down menu. For Result Must Contain, choose All Search Terms (AND). Then click Submit Query. You should get 30 results, some of which are no longer current.
the catholic network (ewtn) has a show called "the way".....why don't they go after poor little mother angelica for her whole network instead of someone selling a $15,000 domain....
I then changed the website name to "The Path Of Christ Ministry" (several years ago) after this letter from TWI until I received the trademark approval.
During my application for a trademark for "The Way Of Christ Ministry",and after receiving preliminary approval (because the trademark office did not find any conflicting marks including TWI's), TWI continued their harrassment anyway.
TWI filed a dispute over the trademark application, and made the $300 trademark so costly with their legal manuverings, that I withdrew my application for the trademark. (This was discussed on waydale)
TWI in this current lawsuit brings up the old website name as being a part of their proof of infringement.
quote:the catholic network (ewtn) has a show called "the way".....why don't they go after poor little mother angelica for her whole network instead of someone selling a $15,000 domain....
My point exactly. TWI is doing this purely to harrass an ex-member (me). There is no real issue of copyright infringement. See the letter when they harrassed me before.Proof: (I have already dealt with this before)
You’ve already indicated that you don’t fully understand the complaint. First, you said it was about the domain name. Later, you said, “TWI's claim of copyright infringement” is “mainly for” your previous use of the name, “The Way of Christ Ministry.” Then you said, “The main issue is their allegation of trademark infringement for using "The Way" in any religious context or otherwise because TWI owns this phrase.” After that, in the “Lawsuit contest” thread, you went back to copyright infringement.
Now, you indicate that you don’t understand the letter you cited. The issue in that letter is not, as you wrote above, “using ‘The Way’ in any religious context or otherwise because TWI owns this phrase.” TWI makes no claim of ownership or special rights to the phrase, except as a trademark. They do not demand that you not use the phrase. Their demand concerns your use, for goods and services related to religion, of a name using the words “The Way”. From the letter you cited: “Therefore, on behalf of our client, we demand that you immediately and permanently cease all use of the name "The Way of Christ Ministry" and any other name using the words "The Way" for any goods and services related to religion, including changing the name of your corporation.” (Emphasis mine)
The fact that the complaint cites a previous dispute does not make that the “main issue” in this one. It may be cited to show intent or a pattern, which I think it does. Perhaps more importantly, it would appear to be a matter already decided, possibly conceded by you, that weighs in TWI’s favor.
You should realize that whatever the issues are in this case, they will be decided by impartial people, whose opinions will be based on facts and the law, rather than the anger of ex-cult followers. At issue are not all uses of “The Way” or “The Way International”, but your use of those words, not in all contexts, but in particular ways that TWI claims infringe on its trademark rights. I think they’re right, in both cited instances. The domain name one is pretty straightforward. I’ll elaborate a bit on your previous use of “The Way of Christ Ministry.”
You didn’t choose the name “The Way of Christ Ministry” independently of The Way International, which is also known as “The Way Ministry.” You inserted “of Christ” into the name TWI was popularly called by many of its followers. Moreover, you underlined the words “of Christ” in “The Way of Christ Ministry.” Deny it all you wish, but that name, as you presented it on your web pages, was intended to convey a message about “The Way Ministry”, by contrasting it with Christ’s way. The subtitle and the contents of the web pages make the association, and your intent, obvious. You were using a variation of TWI’s name, including a registered trademark, in a manner that arguably (I think clearly) infringed on their rights. An attorney reviewing a trademark application for “The Way of Christ Ministry” would not likely see the connection, and apparently did not. Such a possibility is one reason that applied-for trademarks are published for opposition, before being registered. TWI opposed, and their opposition was sustained by the Trademark Trial and Appeal Board. Even if that was a default judgment, it would be something that TWI would be reasonably expected to cite.
Do what you want, guy, but I think facts, the law, and basic morals (as judged by an impartial person of integrity) weigh against you. I think you’d do well to release your claim to “thewayinternational.com” domain, in exchange for reimbursement of your actual expenses related to that domain.
Long Gone: Your points are well taken and I will be more precise in my wording and using trademark/copyright correctly in the future.
I withdrew the trademark application because TWI was making a $300 trademark application too costly, and then to further harrass me, wanted to depose me for several days over the trademark issue in the middle of the summer semester of school.
I had also run up $2000 in attorney fees and it was not that important an issue to have the trademark.
Regarding the domain name, again, if TWI had made a reasonable, business like offer versus sicking their attorneys on me and demanding the domain name, they would have had the domain name.
However, TWI would have still found a pretense (in my opinion) to sue me on other grounds like the ones in this lawsuit.
When I get a copy of the complaint that is more readable than the fax I got from the court, I will put it up for all to see. I will also shortly put up TWI's demand letter and my response to it from December.
By the way, TWI's grounds for infringement are based on my using the domain name and trademark for advertising religious goods and services (class 41).
Unfortunatly, they have no legal standing at all outside of the class of goods and services their trademark gives protection for. And TWI's class of goods and services (class 41)is a different class from my use (class 38)alleged to have infringed on The Way trademark.
I received your letter forwarded from my previous address, and have reviewed your claims of alleged copyright infringement for the mark "The Way" registration number 1,155,904.
The previous discussion that I had with your office regarding this mark was in refernce to a trademark opposition that your office filed on the proposed mark "The Way Of Christ Ministry", a religious website personally owned by me, unlike Ex-Cultworld Magazine, Inc. of which I am but one of the editors and contributors. This mark had preliminary approval, because the Trademark Office had found no conflicting marks, your client's included. It is only in your making the process too expensive and cumbersome at the time that you were successful in your attempt to have me withdraw the application. Your legal arguments were lacking then as they are in your current correspondence.
Your claims of trading on your client's goodwill and reputation and causing confusion are without merit. The page in question clearly stated that it was not The Way International website, and gave the reader the option of going to The Way International's website via a link provided, or to go to a source of information about The Way International. I cannot see how anyone could be confused about the very clear wording. Also, the only people allowed to purchase materials from The Way International are their members who know full well that this site is not their official site. And there can be no confusion with the general public as they are prohibited from puchasing materials without being active participants in the group.
Your claim of unfair competition is also without merit, because the services provided by the website you claim infringed on your client's mark were not "Educational Services-Namely, Providing Religious Teaching Services by Means of Motion Pictures and Slide Presentations and Producing and Presenting Musical, Dramaticomusical, and Dramatic Productions and Presenting Works of Art, Publishing of Periodicals and Booklets of a Religious Nature" as stated in The Way's trademark description.
Your client's mark was granted under class 41, and only protects the trademark from infringement by similar organizations, and in the same class. The alleged infringement by Excultworld Magazine, Inc. which has been incorporated for years as a web magazine, a member of the New England Press Association, and not a religious publication, would be listed under a class 38 and or class 42 classification of goods and services as other organizations of similar purpose are.
Your claim of of dilution requires that the alleged infringer do so within the same class of goods and services. Since this is not the case, again your legal argument is without merit. Further, even if the alleged infringer was in the same class of goods and services, your argument falls short because there are tens of thousands of religious organizations that use "The Way" in the name of their organization or website, all of which would be infringers by your definition. It could be argued unsuccessfully that a drop of water into a lake would dilute it, which is the situation with your client's trademark.
Further, if you were to do an internet search of all businesses using the phrase "The Way" in the name of their organization, according to Google, they number well over a million. Your client's mark "The Way" is already so diluted, that it lacks any uniqueness whatsoever, and even your client has acknowledged this reality by registering derivitive marks like the Way Magazine, The Way Corps etc.
Further, your claim that all derivatives that use "The Way" as part of their mark are infringers is again without legal foundation. And to be clear on this issue, your allegation that thewayinternational.com is covered by The Way's copyright is again without merit, as well as The Way International.
Your client's mark was granted for the specific wording "The Way" without any additions or subtractions, derivatives etc. Again, your firm already knows this and so does your client. Why would there be registrations of the derivatives of "The Way" like "The Way Corps" , "The Way Magazine", "The Way of Abundance and Power" etc. if your client's mark "The Way" covered the derivatives? The answer is that it does not as even acknowledged by your client themselves, and their legal counsel who registered the derivative marks.
Your claim of willful infringement is hereby not only denied, but refuted as being without any legal foundation. Further, the true purpose of your correspondence is continued harrassment. Your client seems to feel that they can harrass or intimidate anyone who uses the phrase "The Way" they don't like. In fact, your client has staff whose sole purpose is to monitor ex-members and keep records of their activities. These facts prove an intent to harrass, as well as your intentional misrepresentation of The Way International's rights under the trademark laws.
Further, with so many religious organizations allegedly infringing on your clien's mark, the lack of vigorous defense of your client's mark evenly across the board shows that your client recognizes the futility of the task because there is so much dilution. This begs the question of why your client selectively targets for "enforcement" people who had a past relationship with their group.This rings very much of harrassment towards ex-members.
Your client's abuse of the trademark laws for harrassment is noted, and if you wish to pursue this matter further, my first action will be to file a petition with the Trademark Trial and Appeal Board for cancellation of your client's mark. There are several grounds upon which this could be successfully accomplished. I also think they would like to know about the deception foisted upon them in The Way International's original trademark application.
If I do not hear from you within 10 days of receipt of this letter that your client will cease and desist all harrassment, I will assume that you wish to pursue the matter. At which time, I will go ahead and file a petition to cancel with the Trademark Trial and Appeal Board.
One part of this puzzle you probably don't know about or you do,is that TWI's own attorneys may have realized that "The Way" by itself is indefensable.
They have registerd "The Way Of Abundance and Power", "The Way Corps", "The Way Magazine", and many others. If their original mark "The Way" could be defended, why were all the other derivatives registered?
My trademark attorney who sent them the letter reproduced on the Path of Christ website is one of the best in NH and has argued and won trademark cases for some very large companies all the way up through the US Supreme court.
He said that The Way Of Christ Ministry was not an infringing mark, and filed the trademark application for me.
Apparently your desire is not to have a civil discussion about the issues, but to instead demean and ridicule me any chance you get.
Why don't you go back to your TWI handlers. You are obviously an attorney or paralegal working for them who is attempting to discourage me.
If you aren't then start acting in a civil manner or stay away. You aren't contributing anything that is of any benefit to those discussiong this case.
I admit I'm entering this discussion a little late, and this is in reply to a previous post... Is it necessary to have a .com site rather than .org to sell things? National Public Radio (npr.org) sells things from their site.
In briefly reading over some of this. I question whether the corporation the Way International can get a copy right at all on the phrase "The Way" considering it is so generic and has such a wide range of usages. However, a trademark for the phrase "The Way" with some distinctive graphics or art work could be easily obtained with application. Just a little food for thought.
quote:I question whether the corporation the Way International can get a copy right at all on the phrase "The Way"
Answer: They did get a trademark for religious goods and services (class 41), and copyrights for the little round way symbol, way corps etc.
The trademark ("The Way") in the opinion of many is not defenseable because it has become so generic in the religious field, and TWI has no way to enforce it. Perhaps thousands of churches today use this phrase in their name.
ex-way daryl:
quote:Is it necessary to have a .com site rather than .org to sell things?
I am not absolutely sure, but I think any organization can as you yourself observed.
This would explain why they registered "The Way Magazine", "The Way Corps", "The Way of Power and Abundance", etc. They are full aware that there use of "The Way" trademark of itself and without distinctive graphics is on very shaky grounds.
I was going to make my previous post my last one to this topic, but now I want to clarify something. I have nothing but contempt for TWI. I simply think that you’re in the wrong here. The reasons Rafael gave are the most important ones, and I agree with him entirely. I also think you’re wrong on the law concerning this matter, but you have every right to defend your position vigorously, and I support your right to do that. I just think it’s a waste.
Several years ago, a storm blew down a tree on a rent property I own, and it landed on a neighbor’s roof. Legally, it was an “Act of God” and I was not responsible for damages, but I offered to re-shingle the slope of the roof where the tree landed, even though the damage really only amounted to about five broken shingles and a few scuffed-up ones. Before that could be arranged, I ran into him at the local hardware store, where I was picking up materials for an emergency plumbing repair at an apartment building I own. I was wet, dirty, in a bad mood, and in a hurry. Apparently I said something that offended him, although I’m not sure what. A few days later, he notified me that he was suing me for an entire new roof. He did, I won, and he got nothing. My legal costs were more than the cost of the repairs that I offered to do, but less than the cost of a new roof. His legal costs were about the same. Together, we spent almost enough for a new roof, but neither of us received any benefit from it. I went on with life. He’s still mad. And his roof is still in the same condition as the day the tree was removed, with a few replacement shingles that don’t match covering the damage.
I know that’s not exactly analogous to your situation, but I think there are some similarities. He allowed his anger for a perceived slight to interfere with his good judgment and his sense of integrity. He wanted to make me pay, not for the damages, but for offending him. He did cost me some money, but no lasting harm. The lasting harm was to him, primarily in the form of continued anger because he didn’t “get” me. I think that’s what will end up happening in this matter. You’ll cost TWI some money, but will probably not even recover your costs. They’ll go on, with little thought of the matter, but you will continue to be angry, possibly even more than you are now. In other words, the biggest loser, in ways that matter, will be you.
I may not come across all lovey-dovey, but I do wish you well. I hope you’ll consider these things and seek a reasonable resolution, along the lines of what Rafael suggested.
ExWayDaryl, a short answer (bout all I know really :)-->) would be no. The domains - com org net, etc. are established to broadly group sites according to purpose...com is generally for commercial business, org is for organizations of various kinds such as educational, universities, etc - non profits generally use the org domain names. You can maintain business using any domain name. The distinction would be profit/non-profit. Still, it's common practice to register all the domains for a given site name. IMO, the Way would have an interest in owning all the domains for a name.
I think this is where Pat's saying the issue is trademark and copyright based. If I registered socks.org, that's it. Someone else could register socks.com and carry on under that name all day long and on the basis of the domain registration I couldn't insist that they stop. But if I had "socks" trademarked and/or copyrighted to protect and own that name I could proceed based on their use of the name, not the domain registration itself. The use of the url name is relatively recent, since the inception of the "world wide web". Behind it is the actual ip address assigned to each registered domain name - "20.234.45.67". That's what I "own" along with the word/name I register, and each IP address is distinct and different. The word "name" crosses over into other areas of ownership too, though.
F'instance again, someone could register "TWI" and they might hear from The Welders Institute before they'd hear from The Way International. But if the use was clearly related somehow to welding I suppose they'd have a case to make that I stop using it based on their trademarking. (I don't know, it's just an example).
Pat, the more I understand about this the more I follow Long Gone's view. I still feel like I don't have the whole picture, but frankly the sum of 15,000 dollars for a domain name - I didn't realize at the outset that was what you were doing. I still feel like they're numb nuts for handling the whole thing the way you've described but in fact that's why people trademark and copyright names, so that they can own and control the use of it. I'd never expect them to act in a civilized manner so any ham handed behavior is to be expected. As far as I understand where you're coming from on this, I understand how you feel but there's a lot going on it appears. It's why I have nothing to do with them and won't get mixed up with them in any way. It's bound to bring the worst out of everyone involved. If I don't have to get in a snake pit, I don't.
...Why don't you go back to your TWI handlers. You are obviously an attorney or paralegal working for them who is attempting to discourage me.
If you aren't then start acting in a civil manner or stay away. You aren't contributing anything that is of any benefit to those discussing this case.
If that is an example of your thought process, then you are in trouble, Pat. Disagreeing with you and your point of view is "obviously" working for TWI? Get a grip.
BTW, I hope you win, your grandstanding and self-promotion notwithstanding
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Sasquatch
Pat,
Go for it! I think that it is awesome what you are doing. $15,000 isn't enough IMO. I gave more than that to them in less than 5 years.
If I would of known at the time what kind of cult I was following, I would have gladly given my money to you instead
:)--> lol
Stick it to 'em Pat!!!!
Sasquatch
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pjroberge
It appears that the major complaint TWI has with me is not the domain name. That's right.
TWI's claim of copyright infringement is mainly for the old website design of The Path of Christ Ministry. For a few months, it was called The Way Of Christ Ministry about 1999.
I will need to read the lawsuit again to make sure, but the 48 page complaint seems to have this as the real "offense" that TWI alleges I committed.
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LG
Pat,
It might be a good idea to know what the heck you're being sued for, before you go spouting off about how you're going to win the suit and expose "damaging or embarrassing" facts about TWI in the process.
An even better idea would be to consult someone (a lawyer) who can give you some decent advice.
Even better would be to heed Rafael's advice.
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Raf
Wow. Thanks Long Gone.
Pat, on the legal front I really do bid you Godspeed. I don't know what else to say: it's not like I'm all fond of TWI and want to see them win or anything. Far from it.
By the way, thanks for the PT. It did shed some light on the issue. Their motives are, unsurprisingly, despicable.
Your legal rights may well entitle you to a fat paycheck. As you point out, TWI specifically ignored advice to grab the domain name well before you bought it. That arrogance will cost them, I'll bet.
But I guess I'm coming at this from too much of a "sermon on the mount" attitude. If this doesn't call for an application of "turn the other cheek" and "love your enemies," I don't know what does.
Yes, I understand that these verses are hyperbole, and that we really don't empty our closets for every shmoe who comes along with a frivolous lawsuit. But dang, what does this advice mean if it doesn't apply in this case?
I know, I've given an allegedly "Christian" opinion on a message board that is not strictly "Christian." I understand that people are entitled to their opinion and will vehemently disagree with me (even good Christians will disagree with me, I'm sure). But that's the reasoning behind my opinion.
There are plenty of fights worth fighting against TWI. In my humble opinion, this ain't one of them.
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pjroberge
Rafael:
You are right about the domain name not being worth a fight.
The main issue is their allegation of trademark infringement for using "The Way" in any religious context or otherwise because TWI owns this phrase.
Because of my work with the magazine, TWI is using the pretense of trademark infringement to harrass me, plain and simple.
Does anyone really not see the timing of this right after publication of the evidentiary hearings?
Does anyone really believe TWI has sovereign rights to Jesus Christ "The Way"?
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Tom Strange
Let me see if I understand this...
Pat, you're not going through the whole court thing because you think you can get some "easy dough",
you're not going through it because you think you'll be able to keep the name,
you're going through it because they are required to answer your questions truthfully, under oath, under penalty of perjury,
and you want those questions to be revealing of the dark underbelly of TWI in their nature...
Is that the reason that you want to go to bat with them?
(Aside from the homework and bully factors)
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LG
Regarding TWI trademarks, you might want to do a little more research. “The Way” is one trademark of TWI, but not the only one. TWI has used “The Way International” as a trademark for over twenty years. For most of that time, it was not registered but it clearly was a trademark, something that a reasonably observant and competent person associated with TWI would know. Moreover, the words, “The Way International” were part of a registered TWI trademark (serial #2151377) when you acquired the “www.thewayinternational.com” domain. TWI filed the design and words of THIS LOGO as a trademark in 1996. The registration process was completed in 1998.
To see a list of TWI’s trademarks, go to www.uspto.gov. On the left side of the page, under Trademarks, click Search. Choose New User Form Search (Basic). For Search Term, type “way international” “new knoxville”. (Use the quotes and don’t type “the way international”.) For Field, choose Owner Name and Address from the drop-down menu. For Result Must Contain, choose All Search Terms (AND). Then click Submit Query. You should get 30 results, some of which are no longer current.
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No Way
the catholic network (ewtn) has a show called "the way".....why don't they go after poor little mother angelica for her whole network instead of someone selling a $15,000 domain....
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pjroberge
Proof: (I have already dealt with this before)http://www.waychrist.com/1st_twi_letter.htm
I then changed the website name to "The Path Of Christ Ministry" (several years ago) after this letter from TWI until I received the trademark approval.
During my application for a trademark for "The Way Of Christ Ministry",and after receiving preliminary approval (because the trademark office did not find any conflicting marks including TWI's), TWI continued their harrassment anyway.
TWI filed a dispute over the trademark application, and made the $300 trademark so costly with their legal manuverings, that I withdrew my application for the trademark. (This was discussed on waydale)
TWI in this current lawsuit brings up the old website name as being a part of their proof of infringement.
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pjroberge
No Way:
My point exactly. TWI is doing this purely to harrass an ex-member (me). There is no real issue of copyright infringement. See the letter when they harrassed me before.Proof: (I have already dealt with this before)
http://www.waychrist.com/1st_twi_letter.htm
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pjroberge
tom:
No, I am going to bat versus caving into their demands because I refuse to let TWI intimidate or bully me anymore.Link to comment
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LG
Pat,
You’ve already indicated that you don’t fully understand the complaint. First, you said it was about the domain name. Later, you said, “TWI's claim of copyright infringement” is “mainly for” your previous use of the name, “The Way of Christ Ministry.” Then you said, “The main issue is their allegation of trademark infringement for using "The Way" in any religious context or otherwise because TWI owns this phrase.” After that, in the “Lawsuit contest” thread, you went back to copyright infringement.
Now, you indicate that you don’t understand the letter you cited. The issue in that letter is not, as you wrote above, “using ‘The Way’ in any religious context or otherwise because TWI owns this phrase.” TWI makes no claim of ownership or special rights to the phrase, except as a trademark. They do not demand that you not use the phrase. Their demand concerns your use, for goods and services related to religion, of a name using the words “The Way”. From the letter you cited: “Therefore, on behalf of our client, we demand that you immediately and permanently cease all use of the name "The Way of Christ Ministry" and any other name using the words "The Way" for any goods and services related to religion, including changing the name of your corporation.” (Emphasis mine)
The fact that the complaint cites a previous dispute does not make that the “main issue” in this one. It may be cited to show intent or a pattern, which I think it does. Perhaps more importantly, it would appear to be a matter already decided, possibly conceded by you, that weighs in TWI’s favor.
You should realize that whatever the issues are in this case, they will be decided by impartial people, whose opinions will be based on facts and the law, rather than the anger of ex-cult followers. At issue are not all uses of “The Way” or “The Way International”, but your use of those words, not in all contexts, but in particular ways that TWI claims infringe on its trademark rights. I think they’re right, in both cited instances. The domain name one is pretty straightforward. I’ll elaborate a bit on your previous use of “The Way of Christ Ministry.”
You didn’t choose the name “The Way of Christ Ministry” independently of The Way International, which is also known as “The Way Ministry.” You inserted “of Christ” into the name TWI was popularly called by many of its followers. Moreover, you underlined the words “of Christ” in “The Way of Christ Ministry.” Deny it all you wish, but that name, as you presented it on your web pages, was intended to convey a message about “The Way Ministry”, by contrasting it with Christ’s way. The subtitle and the contents of the web pages make the association, and your intent, obvious. You were using a variation of TWI’s name, including a registered trademark, in a manner that arguably (I think clearly) infringed on their rights. An attorney reviewing a trademark application for “The Way of Christ Ministry” would not likely see the connection, and apparently did not. Such a possibility is one reason that applied-for trademarks are published for opposition, before being registered. TWI opposed, and their opposition was sustained by the Trademark Trial and Appeal Board. Even if that was a default judgment, it would be something that TWI would be reasonably expected to cite.
Do what you want, guy, but I think facts, the law, and basic morals (as judged by an impartial person of integrity) weigh against you. I think you’d do well to release your claim to “thewayinternational.com” domain, in exchange for reimbursement of your actual expenses related to that domain.
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pjroberge
Long Gone: Your points are well taken and I will be more precise in my wording and using trademark/copyright correctly in the future.
I withdrew the trademark application because TWI was making a $300 trademark application too costly, and then to further harrass me, wanted to depose me for several days over the trademark issue in the middle of the summer semester of school.
I had also run up $2000 in attorney fees and it was not that important an issue to have the trademark.
Regarding the domain name, again, if TWI had made a reasonable, business like offer versus sicking their attorneys on me and demanding the domain name, they would have had the domain name.
However, TWI would have still found a pretense (in my opinion) to sue me on other grounds like the ones in this lawsuit.
When I get a copy of the complaint that is more readable than the fax I got from the court, I will put it up for all to see. I will also shortly put up TWI's demand letter and my response to it from December.
By the way, TWI's grounds for infringement are based on my using the domain name and trademark for advertising religious goods and services (class 41).
Unfortunatly, they have no legal standing at all outside of the class of goods and services their trademark gives protection for. And TWI's class of goods and services (class 41)is a different class from my use (class 38)alleged to have infringed on The Way trademark.
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pjroberge
My reply to TWI's demand letter of December:
Patrick Roberge
P.O. Box 305
Hinesburg, VT. 05461
Eric Steiner
Baker & Hostetler
333 South Grand Avenue Suite 1800
Los Angeles, California. 90071-1523
December 30, 2003
Dear Mr. Steiner,
I received your letter forwarded from my previous address, and have reviewed your claims of alleged copyright infringement for the mark "The Way" registration number 1,155,904.
The previous discussion that I had with your office regarding this mark was in refernce to a trademark opposition that your office filed on the proposed mark "The Way Of Christ Ministry", a religious website personally owned by me, unlike Ex-Cultworld Magazine, Inc. of which I am but one of the editors and contributors. This mark had preliminary approval, because the Trademark Office had found no conflicting marks, your client's included. It is only in your making the process too expensive and cumbersome at the time that you were successful in your attempt to have me withdraw the application. Your legal arguments were lacking then as they are in your current correspondence.
Your claims of trading on your client's goodwill and reputation and causing confusion are without merit. The page in question clearly stated that it was not The Way International website, and gave the reader the option of going to The Way International's website via a link provided, or to go to a source of information about The Way International. I cannot see how anyone could be confused about the very clear wording. Also, the only people allowed to purchase materials from The Way International are their members who know full well that this site is not their official site. And there can be no confusion with the general public as they are prohibited from puchasing materials without being active participants in the group.
Your claim of unfair competition is also without merit, because the services provided by the website you claim infringed on your client's mark were not "Educational Services-Namely, Providing Religious Teaching Services by Means of Motion Pictures and Slide Presentations and Producing and Presenting Musical, Dramaticomusical, and Dramatic Productions and Presenting Works of Art, Publishing of Periodicals and Booklets of a Religious Nature" as stated in The Way's trademark description.
Your client's mark was granted under class 41, and only protects the trademark from infringement by similar organizations, and in the same class. The alleged infringement by Excultworld Magazine, Inc. which has been incorporated for years as a web magazine, a member of the New England Press Association, and not a religious publication, would be listed under a class 38 and or class 42 classification of goods and services as other organizations of similar purpose are.
Your claim of of dilution requires that the alleged infringer do so within the same class of goods and services. Since this is not the case, again your legal argument is without merit. Further, even if the alleged infringer was in the same class of goods and services, your argument falls short because there are tens of thousands of religious organizations that use "The Way" in the name of their organization or website, all of which would be infringers by your definition. It could be argued unsuccessfully that a drop of water into a lake would dilute it, which is the situation with your client's trademark.
Further, if you were to do an internet search of all businesses using the phrase "The Way" in the name of their organization, according to Google, they number well over a million. Your client's mark "The Way" is already so diluted, that it lacks any uniqueness whatsoever, and even your client has acknowledged this reality by registering derivitive marks like the Way Magazine, The Way Corps etc.
Further, your claim that all derivatives that use "The Way" as part of their mark are infringers is again without legal foundation. And to be clear on this issue, your allegation that thewayinternational.com is covered by The Way's copyright is again without merit, as well as The Way International.
Your client's mark was granted for the specific wording "The Way" without any additions or subtractions, derivatives etc. Again, your firm already knows this and so does your client. Why would there be registrations of the derivatives of "The Way" like "The Way Corps" , "The Way Magazine", "The Way of Abundance and Power" etc. if your client's mark "The Way" covered the derivatives? The answer is that it does not as even acknowledged by your client themselves, and their legal counsel who registered the derivative marks.
Your last claim of cybersquatting under the Latham Act is again without merit. Sec. 1125 clearly states: (4) the following shall not be actionable under this section: (A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark. © All forms of news reporting and news commentary. Again, even if the alleged infringement were in the same class of goods and services as your client's, they would be competing products.
Your claim of willful infringement is hereby not only denied, but refuted as being without any legal foundation. Further, the true purpose of your correspondence is continued harrassment. Your client seems to feel that they can harrass or intimidate anyone who uses the phrase "The Way" they don't like. In fact, your client has staff whose sole purpose is to monitor ex-members and keep records of their activities. These facts prove an intent to harrass, as well as your intentional misrepresentation of The Way International's rights under the trademark laws.
Further, with so many religious organizations allegedly infringing on your clien's mark, the lack of vigorous defense of your client's mark evenly across the board shows that your client recognizes the futility of the task because there is so much dilution. This begs the question of why your client selectively targets for "enforcement" people who had a past relationship with their group.This rings very much of harrassment towards ex-members.
Your client's abuse of the trademark laws for harrassment is noted, and if you wish to pursue this matter further, my first action will be to file a petition with the Trademark Trial and Appeal Board for cancellation of your client's mark. There are several grounds upon which this could be successfully accomplished. I also think they would like to know about the deception foisted upon them in The Way International's original trademark application.
If I do not hear from you within 10 days of receipt of this letter that your client will cease and desist all harrassment, I will assume that you wish to pursue the matter. At which time, I will go ahead and file a petition to cancel with the Trademark Trial and Appeal Board.
Sincerely Yours,
Patrick Roberge
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pjroberge
long gone:
One part of this puzzle you probably don't know about or you do,is that TWI's own attorneys may have realized that "The Way" by itself is indefensable.
They have registerd "The Way Of Abundance and Power", "The Way Corps", "The Way Magazine", and many others. If their original mark "The Way" could be defended, why were all the other derivatives registered?
My trademark attorney who sent them the letter reproduced on the Path of Christ website is one of the best in NH and has argued and won trademark cases for some very large companies all the way up through the US Supreme court.
He said that The Way Of Christ Ministry was not an infringing mark, and filed the trademark application for me.
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LG
Pat,
It’s no puzzle at all to me. This piddling little squabble is fueled by vanity. Enjoy.
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pjroberge
long gone:
Apparently your desire is not to have a civil discussion about the issues, but to instead demean and ridicule me any chance you get.
Why don't you go back to your TWI handlers. You are obviously an attorney or paralegal working for them who is attempting to discourage me.
If you aren't then start acting in a civil manner or stay away. You aren't contributing anything that is of any benefit to those discussiong this case.
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ExWayDaryl
I admit I'm entering this discussion a little late, and this is in reply to a previous post... Is it necessary to have a .com site rather than .org to sell things? National Public Radio (npr.org) sells things from their site.
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Mark Sanguinetti
In briefly reading over some of this. I question whether the corporation the Way International can get a copy right at all on the phrase "The Way" considering it is so generic and has such a wide range of usages. However, a trademark for the phrase "The Way" with some distinctive graphics or art work could be easily obtained with application. Just a little food for thought.
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pjroberge
Mark:
Answer: They did get a trademark for religious goods and services (class 41), and copyrights for the little round way symbol, way corps etc.
The trademark ("The Way") in the opinion of many is not defenseable because it has become so generic in the religious field, and TWI has no way to enforce it. Perhaps thousands of churches today use this phrase in their name.
ex-way daryl:
I am not absolutely sure, but I think any organization can as you yourself observed.
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Mark Sanguinetti
This would explain why they registered "The Way Magazine", "The Way Corps", "The Way of Power and Abundance", etc. They are full aware that there use of "The Way" trademark of itself and without distinctive graphics is on very shaky grounds.
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LG
Pat,
I was going to make my previous post my last one to this topic, but now I want to clarify something. I have nothing but contempt for TWI. I simply think that you’re in the wrong here. The reasons Rafael gave are the most important ones, and I agree with him entirely. I also think you’re wrong on the law concerning this matter, but you have every right to defend your position vigorously, and I support your right to do that. I just think it’s a waste.
Several years ago, a storm blew down a tree on a rent property I own, and it landed on a neighbor’s roof. Legally, it was an “Act of God” and I was not responsible for damages, but I offered to re-shingle the slope of the roof where the tree landed, even though the damage really only amounted to about five broken shingles and a few scuffed-up ones. Before that could be arranged, I ran into him at the local hardware store, where I was picking up materials for an emergency plumbing repair at an apartment building I own. I was wet, dirty, in a bad mood, and in a hurry. Apparently I said something that offended him, although I’m not sure what. A few days later, he notified me that he was suing me for an entire new roof. He did, I won, and he got nothing. My legal costs were more than the cost of the repairs that I offered to do, but less than the cost of a new roof. His legal costs were about the same. Together, we spent almost enough for a new roof, but neither of us received any benefit from it. I went on with life. He’s still mad. And his roof is still in the same condition as the day the tree was removed, with a few replacement shingles that don’t match covering the damage.
I know that’s not exactly analogous to your situation, but I think there are some similarities. He allowed his anger for a perceived slight to interfere with his good judgment and his sense of integrity. He wanted to make me pay, not for the damages, but for offending him. He did cost me some money, but no lasting harm. The lasting harm was to him, primarily in the form of continued anger because he didn’t “get” me. I think that’s what will end up happening in this matter. You’ll cost TWI some money, but will probably not even recover your costs. They’ll go on, with little thought of the matter, but you will continue to be angry, possibly even more than you are now. In other words, the biggest loser, in ways that matter, will be you.
I may not come across all lovey-dovey, but I do wish you well. I hope you’ll consider these things and seek a reasonable resolution, along the lines of what Rafael suggested.
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socks
ExWayDaryl, a short answer (bout all I know really
:)-->) would be no. The domains - com org net, etc. are established to broadly group sites according to purpose...com is generally for commercial business, org is for organizations of various kinds such as educational, universities, etc - non profits generally use the org domain names. You can maintain business using any domain name. The distinction would be profit/non-profit. Still, it's common practice to register all the domains for a given site name. IMO, the Way would have an interest in owning all the domains for a name.
I think this is where Pat's saying the issue is trademark and copyright based. If I registered socks.org, that's it. Someone else could register socks.com and carry on under that name all day long and on the basis of the domain registration I couldn't insist that they stop. But if I had "socks" trademarked and/or copyrighted to protect and own that name I could proceed based on their use of the name, not the domain registration itself. The use of the url name is relatively recent, since the inception of the "world wide web". Behind it is the actual ip address assigned to each registered domain name - "20.234.45.67". That's what I "own" along with the word/name I register, and each IP address is distinct and different. The word "name" crosses over into other areas of ownership too, though.
F'instance again, someone could register "TWI" and they might hear from The Welders Institute before they'd hear from The Way International. But if the use was clearly related somehow to welding I suppose they'd have a case to make that I stop using it based on their trademarking. (I don't know, it's just an example).
Pat, the more I understand about this the more I follow Long Gone's view. I still feel like I don't have the whole picture, but frankly the sum of 15,000 dollars for a domain name - I didn't realize at the outset that was what you were doing. I still feel like they're numb nuts for handling the whole thing the way you've described but in fact that's why people trademark and copyright names, so that they can own and control the use of it. I'd never expect them to act in a civilized manner so any ham handed behavior is to be expected. As far as I understand where you're coming from on this, I understand how you feel but there's a lot going on it appears. It's why I have nothing to do with them and won't get mixed up with them in any way. It's bound to bring the worst out of everyone involved. If I don't have to get in a snake pit, I don't.
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Oakspear
BTW, I hope you win, your grandstanding and self-promotion notwithstanding
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