By on May 5, 2015

Fremont Troll In Seattle Circa August 2006

The bane of many a startup and established company alike, trademark trolls now have their sights set on the auto industry.

Portage, Ind.-based Trademark King, Inc. began filing trademark protection claims on 155 names and domains around Thanksgiving of last year, AutoGuide reports. The claims include everything from “Selection Sunday” and “Warren Buffet,” to “Porsche.com” and “Kia.com.”

According to the filings, the trademark troll is staking its claim to these names for “brand development and evaluation services in the field of trademarks, trade names, and domain names,” as well as “creating trademarks for others.” For the right price, however, the company would sell or lease the name “to anyone in the world for a legal business activity.”

And how much did Douglas LeHockey, the owner of Trademark King – the company and the trademark – pay for this trouble? According to Domain Name Wire, $50,000.

When interviewed by the publication about another trademark filing related to an established domain name, LeHockey said it didn’t matter who had the domain name first, but who filed the trademark first, adding he would have his lawyer send a cease-and-desist to the domain owner.

[Photo credit: ngader/Flickr/CC BY 2.0]

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38 Comments on “Trademark Trolls Claiming Automotive Brands For Profit...”


  • avatar
    PrincipalDan

    So is anybody trolling “dead” brands?

  • avatar
    danio3834

    Heh, reminds me a bit of the Nissan.com fiasco.

  • avatar
    thornmark

    U can buy “Edsel” for $1.59. Saturn goes for twice the price of Uranus.

  • avatar

    From the US Patent and Trademark Office:

    “You can establish rights in a mark based on use of the mark in commerce, without a registration.”

    “Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.”

    This guy is claiming that by registering example.com as a trademark, the Example people who have already used example.com in commerce have no right to that use just because they haven’t taken out federal registration of a trademark on the domain name. Seems to me that their prior use of the domain name in commerce makes a challenge to his registration simple. I’d be surprised if he’s actually been able to find an attorney to send out his bogus cease and desist letters.

    • 0 avatar
      CoreyDL

      I always admire trademarks and names which can make their way into standard lexicon use, and nobody thinks about it even being a brand.

      Kleenex
      Band-Aids
      Duck Tape

      • 0 avatar

        Those brands became generic terms before Formica corp lost their trademark on “formica” for not suing every mom & pop kitchen cabinet shop who used the word.

        From an intellectual property standpoint, you want your brand to establish a market but come just short of becoming a generic. Otherwise your brand is diluted, with your competitors benefiting.

        • 0 avatar
          CoreyDL

          That’s a good point.

          The Formica HQ is about 6 minutes from where I live. I did’t even know it was a Cincinnati company until I drove down Glendale-Milford Road and saw all the colorful Formica flags along either side near their HQ.

      • 0 avatar
        ClutchCarGo

        Aspirin was Bayer’s brand name for their new painkiller acetylsalicylic acid back in 1897.

      • 0 avatar
        gtemnykh

        “Duck Tape”

        I mean, there’s a brand of duct tape called “Duck Tape,” but in common parlance and common written form, it’s still ‘duct tape’ last I checked. I think its more of a matter of pronunciation where the two ‘t’s are merged into one: ‘ductape’

    • 0 avatar
      Sigivald

      I’d be shocked if any court let, oh, “kia.com” stand as a trademark from a company with no connection to the Kia brand *while Kia was using kia.com as its domain name*.

      One can put in a registration for any old thing, doesn’t mean the Feds will let it stand to even the most obvious challenge.

      (From the USPTO’s FAQ: “Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.”

      KIA – e.g. – will completely trounce these guys in court, since they have *been using the kia.com name in commerce* for years, and the other guy has never done so, and has no rights to do so.

      I share Mr. Schreiber’s surprise that any lawyer would go along with this, especially against large multinationals and Warren Buffet; people with expertise, lawyers, and piles of money to fight a BS claim.)

    • 0 avatar
      brn

      They might not own the trademark, but they own the domain.

  • avatar
    sirwired

    Uh, yeah… unlike the more-difficult-to-defend patent trolls, slapping this guy upside the noggin, should he actually find a lawyer to take his case, is pretty darn trivial. Meaning he just blew $50k for a combination of USPTO rejections and maybe some worthless trademarks he can’t actuallly use, on the off-chance some of the registrations are successful.

    It’s a shame the USPTO doesn’t have a way that I know of to simply bar any future filings by this clown.

    I know that the USPTO approves some silly stuff, but the chance they’ll actually approve an application for a trademark to some random a$$clown for porsche.com is pretty much zero, meaning that $350 filing fee is going down the drain.

  • avatar
    thelaine

    That is a great photograph.

  • avatar
    Chocolatedeath

    Dude why am I not surprised. Apple just got a patent on the shape and feel of their watch…really

  • avatar
    Ron B.

    This Idea of running interference on a name to gain a profit isn’t new. Harrods,the big department store in London sent lawyers around the western World in the 1980’s to tell anyone using the name Harrod,in their business to C&D. In my home country new Zealand, there is a small town which had a mens wear shop run by a family called Harrod. Guess what? the mighty reach and finances of Harrods of London attempted to get them to shut down. It was case of the mouse that roared and they defeated the lawyers of the owner of Harrods in the supreme Court. Such things should be seen for what they are , a symptom of greed,and nothing less.

  • avatar
    Pch101

    He would have had better luck lighting the $50,000 on fire.

    • 0 avatar
      05lgt

      My experience went like this: “You’ve had no sales, that’s no commerce and no right. Get off my mark or I’ll waste your money and still get it.” Crazily enough, it worked.

  • avatar
    Charliej

    Businesses tend to hate have to spend money on frivolous crap. I am really surprised that patent trolls and their ilk are not found dead in a ditch somewhere. It seems like poking a mega corporation with a sharp stick would be a bad idea.

  • avatar
    Flipper35

    The issue with the domain names has been through the courts many times and the courts have almost always ruled in favor of the established brand. That said:

    “while use of a trademark as a domain name to extort money from the markholder or to prevent that markholder from using the domain name may be per se dilution, a legitimate competing use of the domain name is not. Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.”

  • avatar
    JPaulV

    Domain registration however does not allow people to register a domain name that is the same as someone’s registered trademark. It is relatively easy for a trademark holder to notify the domain registration authority that their trademark is being used by someone who does not own the trademark and the domain holder is shut down. If the person tries to re-register the domain name they can be banned from ever getting any domain name.

    In the USA you cannot sit on trademarks, you have to prove you are using the trademark. When I saw the title of the article I thought for sure it was going to be about China.

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