Brett Tabke Threatens LondonSEO For Trademark Violation

94 comments

Brett Tabke is threatening legal action against LondonSEO for violating his registered trademark 'PubCon' on their non-profit site.

Seems he posted on the site as 'BoboTheCat' just before sending the threatening email.

# BoboTheCat:

btw - pubcon is trademark owned by webmasterworld inc I believe.

Do US trademark apply in countries outside of the US?

Comments

As pubcon has been held in

As pubcon has been held in London for the last 6 years (according to its own history page) they may well have grounds, given it is the name they have traded on (although it may not be a UK registered mark) for much of that time.

Great exposure

>>Next PubCon
Friday 24th March @ 7pm

I might actually go to this one...

By law, he has to defend his

By law, he has to defend his trademark. Otherwise, he loses rights to it. I doubt anything will come of this.

he has a right

Brett has a right and a duty to defend his trademark. Especially since it was originally been held in London. I'm not a lawyer, but if it was me I sure would defend it.

Bluff?

As I recall the first pub conference was held by Mike Mackin, and then RCJordan and NFFC organized and promoted the second one.

Looks like RC Jordan has owned pubconference.com since Jun 2001. The outcome of this may be very interesting if this ends up in court.

I doubt Brett could claim first use.

No, but Brett can claim

No, but Brett can claim first trademark. It doesn't matter who owns it first, it is the one who has first trademark.

Trademarks will not stand in

Trademarks will not stand in court if a term can be proven to be used by another party before the trademark was filed.

Brett can not claim first use.

.

PubConference and PubCon are distinctly different. It would be the first use of "pubcon" that would be significant.

he may have a right, but he's clearly been stupid about it...

Clearly LondonSEO isn't maliciously attempting in anyway to mussel in on Brett's turf -- or trademark, that's nuts! We are just a few locals that meet up from time to time to talk crap.

Big deal if the ("word") PubCon appears on the page, right? Yahoo! aren't going to come along and bust our chops just cos we have their trademark on our page, right? LOL!

It IS a big deal ...

... if the word PubCon is being used to refer to a different entity than one of Brett's conferences.

That's exactly the sort of thing trademark owners are required to be diligent about pursuing.

Andre's right

Why anyone would go nuts on a bunch of friends getting together for some beers is beyond me. If the intention is to protect the trademark there are far better ways of doing so than what was done.

I've had exactly the same trademark issue myself and resolved things peacefully. But I didn't start off with the lawyer threat (and the other site was definitely trying to take my site traffic and trade on the mark). Instead I just noted that the term was trademarked, I have to defend it or lose it, so would they please remove any look-alikes and get their own term. That's all it took. No heavy handed tactics needed. And I didn't look like a bully in front of the community.

Irony

Maybe it's just me but anyone who made a post on their blog entitled Content Stealers Should Be Shot might actually understand why someone is upset and would want to protect their trademark ...

PubCon ~ PubConference ~ Pub Conference

Clearly PubCon and PubConference are related terms, the trademark was filed in 2004, and the original event planners were calling it PubCon back in 2002.

It is obvious to anybody who is objectively paying attention that the trademark is weak at best. And that Brett would have a can of worms if he tried to enforce it.

Labels

A normal C & D is not bullying so let's not call it that when we haven't seen the letter.

graywolf, you're way off base, mate...

Dude, we aren't ("stealing") anything... are we?

How can you compare SPAMers that go out and blatantly steal the content of others, with a bunch of SEO guys that are innocently arranging to meet up for a beer... and happen to have the ("word") PubCon, for whatever reason, mentioned somewhere on the page?

Sheez... irony, methinks not :|

It is bullying

I don't need to see the C&D to call it bullying - because starting with an email saying they're looking for a place for the lawyers to send the C&D is exactly that - bullying, threatening, intimidation.

You don't need a lawyer and a C&D to protect your trademark. As I noted, what WMW should have done is start off with a friendly 'did you know?' email. That's the first step, not the lawyers. Using the lawywers as the first step is done for intimidation purposes. And that says a lot.

The fact is, Tabke's gone and tried to play the corporate heavy against a few folks that meet up for a beer and use a blog to organize it.

Coattails

While I'm not qualified to speak in a legal capacity on trademark law you do have to acknowledge that Brett has done more work than anybody building the "Pubcon" brand. Whether it was your original intention or not you have to acknowledge that the similarity of location, and subject matter could easily lead someone to confuse your event for one of Brett's pubcon's. So while you may not be stealing his event you are taking advantage of any similarity and confusion, that you are causing, intentionally or not.

In other news

What'll be some real news is that this will either never get mentioned at WMW, or get buried in Foo. You read it here first :).

Confusingly Similar

I think everyone would assume WmW PubCon if they read the following -

The next London SEO bash
by Ekky @ 4:33 pm. Filed under PubCon

The Legion
348 Old Street
Shoreditch
London
...just a few SEOs getting together for a lot of beers

Why not go for the gold and run your own SES meeting? I mean, it does seem more than a little hypocritical in light of the post Graywolf mentioned. You make a big deal out of your purchasing copyright protection, but who cares about Trademarks, right?

Perspective...

Let's get a little perspective on this, the London SEO bash is in no way designed nor intended to step on Brett's toes. This is not a profit making venture, simply a few guys getting together for a few drinks. We specifically point out there is no charge, there is no formal organisation except for about 10 minutes to phone the venue and put together a post inviting people to come down. I think we all need to just relax our sphincters a little and have some fun. Now whose ready for a hug?

Name

Quote:
in no way designed nor intended to step on Brett's toes

Then avoid using or referring to the name PubCon. It's as simple as that.

Hug me! :)

I'd like a hug, Ekky ;-)

Graywolf, Nebraska, Brett... wanna join in on the group hug?

Looks...

it's only me and you in the group badboy!

PubCon in Shoreditch

So who's coming? I for one wouldn't miss it for the world.

party

Hey y'all can swing by my place this weekend, it'll be just a few friends hanging out chatting, there's no charge and y'all can try this new drink I'm working on called cokes-cola

Tortoise...

It costs a couple of hundred to register a trademark in the UK. If he hasn’t bothered doing the bare minimum its arguable that he doesn’t care and he's not entitle to exclusive usage. I wouldn’t be surprised if there’s a few other people scrambling for the trademark forms right now.

This might however put a small spanner in the works :-

PUB CON LTD
MINERS ARMS
107 ALBERT ROAD
MORLEY LEEDS
WEST YORKSHIRE
LS27 8LG
UK

Get 'em Brett

I've got my own term that we created around the Y2K hysteria. All my buddies and I that got together for lunch and beer coined the term B2K for BEER-2000 and we still have B2K get togethers. Not like it's been trademarked but it's just LAME that those asses have to use someone else's name.

Bunch of talentless hacks could come up with something new like PubNet for pub networking or TapRap, BeerPeers, DrinkThnk, heck, I can come up with dozens of terms in an hour, it's not hard.

Of a term that defines those of us that spend TOO much time meeting in the pub:

GutFest

Those that defend their use of PubCon just defend people with weak minds, nothing more.

a trademark is a trademark,

a trademark is a trademark, he can and should enforce it. Now that we commonly use google as a verb doesn't mean that it is any less of a trademarked term.

talentless?

Quote:
Bunch of talentless hacks

lol. I've met many of these folks, and that's not the way I'd be describing them. Unlike many people who only drop vague references like 'I know stuff but I can't really tell you because I only saw it on my wife's computer'. You know the type.

There's a lot of folks in this industry that walk softly and carry a big stick. I'm not one of them, but I'd be careful about calling people talentless unless you're pretty sure that's the case.

Talented

If they have so much talent then coming up with a new term is simple opposed to clinging to PubCon, that's all I'm saying, it's lame.

Ok, let's call them copycats instead if that gets the knot out of your knickers.

6:43 pm on Nov 26, 2001

http://www.webmasterworld.com/forum19/403-2-15.htm

>sponsorships

Disclaimer: For those of you just now finding out about the -now somewhat legendary- PubConference and its sister event BarConference, it's important to keep reminding everyone that WebmasterWorld acts as facilitator and primary sponsor to these events but they are independent entities. So, sponsors are underwriting the event, not WebmasterWorld, an important point.

The disclaimer notwithstanding, as far as these types of events go, sponsorship $$-amounts have been best described as, well, cheap. I was lucky enough to be able to attend PubCon, and I know for a fact that there was plenty of 'bang for the buck' at that one. Given the experience gained in developing that stellar event, I can't see how BarConference could come up short on performance, and the sponsors to date seem to agree.

The mere whisper of PubCon now simply means that you clear your calendar and do whatever it takes to get there. But, as Oilman says, all eyes are on BarConference right now, and my crystal ball says that after February I'm going to have TWO events that will be marked as "must-go" on the calendar.
=====
note #1: this was commercial prior use, i.e., sponsored event

note #2: read the disclaimer. webmasterworld was officially NOT connected with pubcon.

Rcjordan, how long do you

Rcjordan, how long do you think it will take for that post to be back edited?

Trademarks will not stand in

Trademarks will not stand in court if a term can be proven to be used by another party before the trademark was filed.

Don't know the law in the UK but that is not true in the US. Especially WRT to somewhat generic-sounding terms and phrases, achieving trademark status can be a matter of use, marketing effort, and public awareness, not who filed first.

BT is just being a good business person by taking efforts to protect what he's worked hard on.

No reason LondonSEO can't use something else. In fact they might be very wise to use something else, in case their thing actually turns into something over time. SEOcialising isn't half bad. Go there, or something like it, and everyone's happy.

It isn't "just a mention"

>>>and happen to have the ("word") PubCon, for whatever reason, mentioned somewhere on the page?

It isn't a "mention". They actually call their event pubcon: http://londonseo.org/blog/next-pubcon-announced.html - it is brand confusion. No matter who you like, who you don't like and how innocent it may be on the part of the LondonSEO group, it is trademark infringement and BT has to protect the trademark. As someone else mentioned and I don't think anyone has heard, he has to protect the trademark by law or he will lose it.

If they were calling it the London Search Engine Strategies meet up, you can bet DS would be doing the same. Though likely not getting trashed as badly for it.

However, the fact that a

However, the fact that a mark is not present in the federal database does not mean that the mark is not currently being used as a trademark by another. (US) Trademark rights accrue from use, not registration. This means that another's prior use of a trademark, whether or not registered, may preclude rights in a proposed mark.
http://www.intellectlawgroup.com/Trademark%20Search.htm

Note that londonseo would be UK trademark infringement. I'd be surprised if BT has the mark registered internationally.

So Casual

Dude, if it's so casual then casually change the f'ing name. What's the big deal? You = bunch of guys w/ beer; brett/RC/WMW = serious business entity with time and money invested in branding PubConwhateveryoucallit. So, in order to continue enjoying your event unhassled why not sober up for 2-3 minutes and come up with a new name. PubCopy. How's that?

BT isn't TRYING to be a

BT isn't TRYING to be a wanker, he HAS to send something like this, or else he loses his trademark. AFAIK, IANAL, in the US at least

btw, love this thread, everyone can sigh in relief, the old TW is BACK baby!

http://en.wikipedia.org/wiki/Brett_Tabke

If you look at the bottom, he is in the Wankers category & you can't argue with wikipedia.

> in the US at least

When did London fall under US legal jurisdiction? I seem to have missed that in the blogs.

Is there no servicemark law

Is there no servicemark law in the UK ? In the US from my research awhile ago, use of the term by a group of people to identify a service, caused it to be protected as a servicemark.

added:
And I thought that was regardless of where in the world it was more important in what context and circles the term was used

International agreements

I'd expect trademarks, copyright, that kind of stuff to be transferable amongst most westernized countries. And some countries have agreements about enforcing stuff across borders - Canada and some US states being one example (you can sue in some US states, and it's enforceable in Canada for example)..

PUB CON LTD

If PUB CON LTD Were to submit a trademark application they would probably prevail over BT in the UK. I took advice in a similar situation a couple of years ago when a competitor registered the .com version of one of my sucessful .co.uk domains. I subsequently registered a Ltd Company, registered the remainig tld's and bought an exact alphanumeric telephone number to backup my claim and easily beat off the competition in a trademark dispute. If they try to trade using the .com. I'm advised I can easily nail them, at least here in the UK. How BT can claim any proprietory rights over that name at this time beats me, I believe he needs to go quite a lot further than just using it at a few events and he would be well advised, if he's not already been beaten to it to get the registration application in pronto.

transferable

>expect trademarks, copyright, that kind of stuff to be transferable amongst most westernized countries.

Madrid System of International Registration of Marks

See the FEE calculator.

Rcjordan, how long do you

Quote:
Rcjordan, how long do you think it will take for that post to be back edited?

That gave me the biggest belly laugh I've had in some time. Thank you, Little.

Besides. It won't get edited. It'll just disappear.

I'm really wondering how

I'm really wondering how close "tabke" and "tool" are in Google's semantics lab.

>back edited

Probably not worth the keystrokes as there are more screenshots logged by third parties than NASA has pix of the moon.

> claim any proprietory rights over that name at this time beats me

People can claim or bluff about anything, it's the proof that's hard to come by. BTW, in the past the US patent/tm office has contacted me about prior use on some marks related to this thread ...I didn't reply.

bobo's getting around these days, hhh

Quote:
Thanks for the great breakdown!

Can you say Bump?

http://www.webmasterworld.com/forum19/3223.htm

Jurisdiction

>> London fall under US legal jurisdiction

About the time we saved your asses from learning German, short memory, sure you aren't French?

>sure you aren't French?

Positive.

IncrediBILL, you are making

IncrediBILL, you are making Americans look stupid with that comment. RC isn't French or British for that matter. Please try to pay attention to the context of the people involved in the debate.

Ignorant statement littleman

Why does he make Americans look stupid?

This reminds me of

This reminds me of Hitler & Nazi's

there I did it, now the discussion is over and we can talk about better things

in the toilet ..

what about a "public convenience"?

anyways, "pubs" are much more prevalent in the UK than the US,
so why not relax?

call it the WMW Pubcon and then there's no confusion whatsoever.

Stupid

Well....Nebraska,
Apart from it being a pathetic attempt at humour, he assumes that the US saved our UK asses from the Germans when we had managed for years without their military assistance. Johnny come lately, but perhaps the US also needed a little help after Pearl Harbour. The Commonwealth stretched across the world and provided a lot of troops, labour and airfields etc that the US simply didnt have. The US populations grasp of history is about as sad as their grasp of world geography.

watch it!

hey cabbagelooking...I represent that remark!

Represent?

Good, you agree then.

History Lesson From Non-Historians

Who cares? Thought this was about trademarks? Using a bullwhip when a slap on the wrist may have worked...

IP Law From Non Lawyers

Who cares, I agree. The discussion about trade marks is a waste of time because no one here, including me (and I've got websites about it) has the slightest clue what they are talking about. Until an IP lawyer turns up with some definitive info I think I'll pass on reading the bar room lawyers that pop out of every nook and cranny.

Uses tricorder on thread ...

Uses tricorder on thread ... it's dead Jim ...

Beam Me Up Scotty

Its life, but not as we know it.

>Its life, but not as we

>Its life, but not as we know it

Speak for yourself. My first run-in with IP lawyers was with a "multi-billion-dollar chemical company" (to qoute their nice, friedly opening C&D). They eventually paid just short of $10k -circa 1997- for the domain after my gold-plated law firm (you know, the type that keep an ex-governor or two on staff just to go to the country club) somewhat rudely informed them that we would go after their trademark.

I also have a Fortune 100 firm lusting after one of my domains which happens to be their trademark in another class. They've been civil since we explained tm class 101 to them.

LMAO

You people are too easy, I fire off one half-hearted attempt at humor and go have lunch at the pub , pound a few pints exercising the liver for St Pats tomorrow, and play poker all afternoon and come back and the thread derails with people telling me an ill-fated joke is historically inaccurate which begs the question of when did jokes have to be fact checked?

Trust me, I'm well aware of history and what was going on back then as my grandfather and dad both served, nothing to see here, move along folks.

Also, I don't make Americans look stupid, we have Bush for that, makes the rest of us look like genuises by comparison.

Back to the OT, if the term PubCon was being used prior to Brett that doesn't necessarily mean anything as there was a Burger King in operation in Kansas City a long time before the fast food chain trademarked Burger King and they came along and somehow made them change their name. Don't ask me how, probably paid them off to go away.

>call it the WMW Pubcon and

>call it the WMW Pubcon and then there's no confusion whatsoever.

So BT should have to change his term because someone stole it? That's idiotic.

LondonSEO should change the name of their little meeting. Even if their use of it doesn't seem like a big deal, people might start associating the term PubCon with any SEO event, which essentially kills the branding and uniqueness of BT's PubCons. I'm behind Brett 100% on this.

I'm behind Brett 100% on this

Agreed. PubCon is Brett's deal.

Brett is a thief

DigitalGhost, your bias is blinding you.

London seo just got some more vistors

:)

Looks like Brett just built an alternative.......I had never heard of this get together, but have now.

Thanks Brett

DougS

Just while we're striving for accuracy here ...

> exercising the liver for St Pats

Nobody in Ireland refers to St. Patrick's Day as "St Pats"
it's either:
Paddy's Day
Patrick's Day
or St. Patrick's Day

not st paddy's day and certainly not st pats.

Don't mean to be too pedantic but this has been pissing me off ever since seeing a "Happy St. Patty's Day" t-shirt in the states once.

Hey if someone does refer to it as st Pats can I sue them ...

as my names is Pats.lol
See u at the LondonSEO drink night guys.

Cheers
N-I-K

Nobody in Ireland

>> Nobody in Ireland refers to St. Patrick's Day as "St Pats"

Dorothy, we're not in Ireland anymore.

I'm actually part Irish, but just the part that likes the beer so it might as well be called St. Beer day for all I care.

Heh - I always thought it

Heh - I always thought it was the Russians saving all your asses by throwing themselves at the Germans on the Eastern Front. ;)

http://en.wikipedia.org/wiki/Eastern_Front_(WWII)

On-Topic though, Brett needs to get the trademark registered in the UK or pick up an International trademark to cover him. Then there is no room for argument.

I get this all the time with US clients looking to use an American recognised trademark to buy French domains. They are shocked that it has so little usefulness outside the US.

Incidentally - has Brett given threadwatch.net back yet?

Not according to the Whois

Not according to the Whois

Just found my notes on this

Just found my notes on this - some may find them useful:

Do US trademark apply in countries outside of the US?

No. They don't but an international one does.

At least in my experience dealing with the French Registry. The French Registry demands trademark be registered with the National Intellectual Property Institute (INPI) of France. Alternatively (usually in the case of non-French companies) they must have successfully registered their trademark with an international body recognised by French law.

France signed up to the Madrid Agreement on International trademarks - an attempt to solve this exact problem. It failed initially because:

Many non-member countries, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan, were not adherents, which undermined recognition of the system as a truly "international" regime. Significantly, many of these countries represent the largest numbers of trademark filings and registrations in the world;

This changed recently:

Two significant recent developments in international trade mark law were the accession of the United States and the European Union to the Madrid Protocol on 2 November 2003 and 1 October 2004, respectively. With the addition of these jurisdictions to the Protocol most major trading jurisdictions have joined the Madrid system.

Which should mean an international trademark covers you pretty well these days. I know you have to first apply for a national or regional registration first, you can then pay to have that lodged as an international registration with the World Intellectual Property Organisation (WIPO).

http://www.wipo.int

http://www.wipo.int/about-ip/en/about_trademarks.html#how_to_register

http://www.wipo.int/madrid/en/

WIPO Int. trademark search

http://www.inta.org/

Must be My Bias

Couldn't possibly be that Brett is the only one I've ever seen market PubCon regardless of who mentioned the term first. When any SEO or SEM hears or sees PubCon they think of WMW.

>>trademark registered in the UK or pick up an International trademark to cover him

Makes perfect sense. So does trying to protect his trademark here and abroad.

>>blind bias

You can say a lot of things about me but 'blinded by bias' isn't something I'll let you get away with. I'd be willing to bet I'm one of Brett's most vocal antagonists.

DG- breathing life into dead threads since 1990 something...

assclowns

Regardless of how anyone feels about Brett, it's just plain wrong for another org or even a group of people to use that name for their get together. It's as simple as that. And if they refuse to change it, they're just plain assclowns.

I think they have decided to

I think they have decided to change it now Jill.

So enough’s enough - we’re not keeping the phrase, we’re not going to come up with an alternative, I’m just getting rid of it.

Hopefully this will be the end of it. Apart from a return to good form over at TW, this has been a complete waste of time.

This has been some great PR for them. I have a feeling their next London SEO bash will be pretty packed - and apparently they will have a mystery guest from the US.

A new conference is born. How about SEO Dinners - does anyone own that?

hmmm - actually you're the closest on that one Jill : -)

Bobo the Busy Cat

It gets worse. Bobo's posted 375 times at wmw.

Not assclowns!

Quote:
I think they have decided to change it now Jill.

Good, then they're not assclowns afterall! :)

assclowns?

Quote:
Good, then they're not assclowns afterall! :)

Unlike the fellow that's sitting on threadwatch.net?

That's quite the deal, bitching about someone sitting on your brand (justified or not), while you've got both ass cheeks parked squarely on someone else's brand. About on par with defending their actions.

:sound of crickets from the Tabke cheerleading squad:

And I'm out...

Like a chicken, I'm going to bow out of this thread. Honestly, I'm Tabke bashing and I don't like it. I don't want to be known as someone with that kind of agenda . Bleh.

threadwatch.net

Tabke likes to make himself look like a douchebag.

It's not a Tabke Issue

It's a simple issue of right and wrong. This other event was wrong to use the pubcon name that was previously used by another event. They've made it right again now by changing it. I doubt there was any intention to mislead in the first place, it was more likely a case of simply being unoriginal and not bothering to think up their own name.

Jill, I can't agree with you

in the UK, PubCon is a pretty obvious contraction of Pub Conference. Slang as it were. Think BarMeet in North American English.

I have pretty strong objections to trying to privatize the language. This isn't a case of kleenex™ which is truly an invented word (nevertheless largely adopted by the public now).

And when an inveterate hypocritical liar, cheat and thief (threadwatch.net is just the top of the iceberg - Brett if you read this before voicing any objection you can start by handing threadwatch.net to Aaron or Nick, at your choice) starts to play these kinds of games, it's more than a little nauseating.

Do as I say, not as I do.

---

Quote:
in the UK, PubCon is a pretty obvious contraction of Pub Conference. Slang as it were. Think BarMeet in North American English.

I don't know anything about that, but BarMeet in North American english, certainly doesn't have any meaning to me.

If Pub Conference has been used in the UK long before Brett's thing, that I suppose that is another story. I have no idea, I'm not an attorney. The fact that it's being used for a search engine marketing get together doesn't help though. If it were a get together of dental professionals, I doubt Brett would be concerned about his alleged trademark.

Pub Con Ltd

Its not only been used but its been incorporated into the name of a Limited Company which probably has more right to the trademark than anyone else.

ICANN

threadwatch.net

Tabke likes to make himself look like a douchebag.

Would deal with that cybersquatting nonsense in a NY minute.

More interesting to me is why does threadwatch.com redirect to whois.sc?

Hey Aaron, gonna go after these cybersquatters?

Much Ado About Nothing

Dost thou not suspect my place? Dost thou not
suspect my years? O that (s)he were here to write me
down an ass(clown)! But, masters, remember that I am an
ass(clown); though it be not written down, yet forget not
that I am an ass(clown). No, thou villain, thou art full of
piety, as shall be proved upon thee by good witness.
I am a wise fellow, and, which is more, an officer,
and, which is more, a householder, and, which is
more, as pretty a piece of flesh as any is in
Messina(or London for that matter), and one that knows the law, go to; and a
rich fellow enough, go to; and a fellow that hath
had losses, and one that hath two gowns and every
thing handsome about him. Bring him(her) away. O that
I had been writ down an ass(clown)!

Cheers,
Str0ud

cybersquatters??

Hmmm... I don't see that, but maybe it's because I park many domains myself. I don't think Aaron has an automatic win on either of those domains.

Is it worth $2400 to find out?

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