Ebay Threatens to sue my start up company.

barterbay

barterbay

New Member
Jurisdiction
British Columbia
Recently I received an email from a law firm that says they represent eBay. The first part of the email talks about how famous eBay is. Then it basically says I cannot use the word "bay" for my business name because I am "free riding" using their fame. I did some research I am pretty sure the common word "Bay" is not trademarked.

Here are the exact words from the email:

"eBay is concerned that you selected BARTER BAY to denote your online goods and services in an attempt to imitate the EBAY mark and free-ride on the success and consumer goodwill of eBay's brand by combining the term "BARTER" with the arbitrary term "BAY." Had you not wished to trade off eBay's fame, you could have conceived of another term for your business, such as combining BARTER with any number of generic terms (e.g., SHOP or MARKETPLACE) instead of the arbitrary term BAY, or conceived of your own arbitrary or fanciful term for your business. Regardless of your intent, your use and registration of BARTER BAY will dilute the distinctiveness of EBAY and cause consumers to mistakenly believe that your business is somehow affiliated with eBay."

I think they found me because I applied for a trademark for the name "barterbay". Nevertheless they say they will take legal actions if I don't do the following:

eBay is hopeful that you will take immediate steps to avoid further violating eBay's rights. eBay would be willing to forego further legal action if you:

* 1) expressly abandon your pending Application No. 88109975 to register BARTER BAY; 

* 2) cease use of BARTER BAY or similar names, including as a business name, trademark, trade name, domain name, on any website, and in any marketing materials; 

* 3) cease use of the BARTERBAY.CA domain name (including by removing all content associated with the website at www.barterbay.ca), and transfer your registration for that domain name to eBay; 

* 4) cease use of BARTER BAY or similar names on any social media accounts and cancel all related social media accounts (including cancelling the accounts located at Barter Bay (@barterbayofficial) • Instagram photos and videos, BarterBay, Barter Bay (@BarterBay) | Twitter, https://www.pinterest.ca/barterbayofficial/, https://plus.google.com/104780822227293955227, Barter Bay, Barter Bay (u/barterbay) - Reddit, and https://barterbay.tumblr.com/); 

* 5) remove your mobile applications from the Google Play (https://play.google.com/store/apps/...er-global-all-co-prtnr-py-PartBadge-Mar2515-1) and iTunes (‎BarterBay) stores;
* 6) refrain from using or seeking to register any other name or trademark combining a generic or descriptive term with the term BAY, including use or registration as a trade name, trademark, service mark, domain name, group name, user name or other designation (including in the social media context), on or in connection with any online or physical marketplace, retail, trading, auction stores or websites, classified advertising services, and related services; and 

* 7) provide written acknowledgement of, and your agreement to comply with, these demands by no later than December 26, 2018. 

I never intended to free-ride on eBay's fame. Barter Bay is an online platform for locals to buy, sell, and most importantly barter goods and services. The idea of connecting bartering communities came to me during my last year of university, and the name was thought out together with fellow classmates. The reason we use "bay" is because our website and app uses a pirate/sailor theme, illustrating the old times when ships travel from island to island bartering goods. Our logo is a whale with a leaf-like tail symbolizing the importance of waste conscious for our environment.

My team and I spend a lot of time and money in our app. I am not sure if I should reply this email. Should I be worried? Should I comply? =/
 
barterbay said:
Recently I received an email from a law firm that says they represent eBay. The first part of the email talks about how famous eBay is. Then it basically says I cannot use the word "bay" for my business name because I am "free riding" using their fame. I did some research I am pretty sure the common word "Bay" is not trademarked.

Here are the exact words from the email:

"eBay is concerned that you selected BARTER BAY to denote your online goods and services in an attempt to imitate the EBAY mark and free-ride on the success and consumer goodwill of eBay's brand by combining the term "BARTER" with the arbitrary term "BAY." Had you not wished to trade off eBay's fame, you could have conceived of another term for your business, such as combining BARTER with any number of generic terms (e.g., SHOP or MARKETPLACE) instead of the arbitrary term BAY, or conceived of your own arbitrary or fanciful term for your business. Regardless of your intent, your use and registration of BARTER BAY will dilute the distinctiveness of EBAY and cause consumers to mistakenly believe that your business is somehow affiliated with eBay."

I think they found me because I applied for a trademark for the name "barterbay". Nevertheless they say they will take legal actions if I don't do the following:

eBay is hopeful that you will take immediate steps to avoid further violating eBay's rights. eBay would be willing to forego further legal action if you:

* 1) expressly abandon your pending Application No. 88109975 to register BARTER BAY; 

* 2) cease use of BARTER BAY or similar names, including as a business name, trademark, trade name, domain name, on any website, and in any marketing materials; 

* 3) cease use of the BARTERBAY.CA domain name (including by removing all content associated with the website at www.barterbay.ca), and transfer your registration for that domain name to eBay; 

* 4) cease use of BARTER BAY or similar names on any social media accounts and cancel all related social media accounts (including cancelling the accounts located at Barter Bay (@barterbayofficial) • Instagram photos and videos, BarterBay, Barter Bay (@BarterBay) | Twitter, https://www.pinterest.ca/barterbayofficial/, https://plus.google.com/104780822227293955227, Barter Bay, Barter Bay (u/barterbay) - Reddit, and https://barterbay.tumblr.com/); 

* 5) remove your mobile applications from the Google Play (https://play.google.com/store/apps/...er-global-all-co-prtnr-py-PartBadge-Mar2515-1) and iTunes (‎BarterBay) stores;
* 6) refrain from using or seeking to register any other name or trademark combining a generic or descriptive term with the term BAY, including use or registration as a trade name, trademark, service mark, domain name, group name, user name or other designation (including in the social media context), on or in connection with any online or physical marketplace, retail, trading, auction stores or websites, classified advertising services, and related services; and 

* 7) provide written acknowledgement of, and your agreement to comply with, these demands by no later than December 26, 2018. 

I never intended to free-ride on eBay's fame. Barter Bay is an online platform for locals to buy, sell, and most importantly barter goods and services. The idea of connecting bartering communities came to me during my last year of university, and the name was thought out together with fellow classmates. The reason we use "bay" is because our website and app uses a pirate/sailor theme, illustrating the old times when ships travel from island to island bartering goods. Our logo is a whale with a leaf-like tail symbolizing the importance of waste conscious for our environment.

My team and I spend a lot of time and money in our app. I am not sure if I should reply this email. Should I be worried? Should I comply? =/
Click to expand...

You should abandon asking the opinions of anonymous people via the internet anytime you feel threatened, bullied, receive a THREAT or CEASE & DESIST letter from a law firm.

It is in your best interests to take the letter and all related documentation to at least three licensed trademark or patent attorneys in your area.

The initial consultation is often offered at no cost to you, other than your time.

Once you've met with the lawyers, you should be informed enough to know what to do next.

In the meantime, don't respond to the law firm, simply wait until you've spoken to the lawyers and hired one.

Be advised none of our regular responders knows anything about the federal or provincial laws of Canada.
 
I don't know anything about Canadian trademark law, but if you were in the U.S., you should be worried. I suggest consulting with a local trademark attorney ASAP.
 
Very often these letters are meaningless and meant to frighten those on the fringes of liability. That said, it's understandable why they contacted you. I'd say that most of the time the options given to you are ones you should absolutely not consider without speaking to a lawyer. This is because - in addition to your question about rights to use "bay" as a bartering or online marketplace - is what you should and should not be doing if you make a decision to cease using the name. They want you to sign statements which you may not realize might also create additional liability. Good luck.
 

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