I am a freeware/shareware programmer for EPOC/Symbian powered PDAs. I have released all my software titles under the name of FatCatz. My first software product (freeware) was released in November 1997.

I registered the domain fatcatz.tm in early 1998 which became the domain name of the Web site to download my software, before that I had used a free web host. I registered the domain fatcatz.net in May 2000 and this became the official Web site. In December 2000 I applied in Taiwan to register the name 'FatCatz', in the hope to protect my domain names.

However, in September 2001 I received a letter from a lawyer acting for Mad Catz Interactive, Inc., USA, to drop the application to register the name 'FatCatz' because it will dilute their brand name. Reasons: Both our names contains 'Catz', also 'Mad' and 'Fat' looks and sound the similar, and we are selling similar products. Check my Web site http://fatcatz.net and check their Web site http://matcatz.net, does not look like I am selling similar products!

I found a Lawyer to act on my behalf. My lawyer's reply was 1) I have been using the name FatCatz since 1997, 2) Mad Catz in unknown in Taiwan and Asia, 3) GTR Group, Inc. only changed it's name to Mad Catz Interactive, Inc. in September 2001 http://130.94.149.154/MadCatz/press_releases.jsp?from=in&row=5&id=6&showDetails=1

Mat Catz lawyers response to 2) Evidence of sales invoices to Taiwan shops, and to 1) & 3) GTR Group Inc. acquired Mat Catz Inc., in September 1999. Mad Catz, Inc. was a subsidiary of Great Basin Brine Shrimp, Inc., established in 1989.

I'm not from American but doing a search for 'Great Basin Brine Shrimp' turn up nothing to do with computers. Looks like a company that probably sell shrimps. So what has this company got to do with PC/console controllers that Mad Catz sells?

If this was a case is in the USA where would I stand? If I loose this case can they take my domain name too? Your comments would be greatly appreciated!

FatCatz

I don't know what sea monkeys have to do with software, but I don't think you have a problem. It sounds as though they are just trying to scare you away. If it were me I wouldn't worry. But that is just my opinion, you have your own.

It sounds as though they are just trying to scare you away.

I know :crap: because they keep emphasizing on how big their company is: CAD$80 million turn over last year, how much they spend on advertising, that they have offices worldwide, etc...

I am scared!

FatCatz

Having dealt with this type of thing before and knowing you have sought legal counsel on your behalf, sit tight and don't let them scare you into submission... this is what they are hoping for. If this company is so large and your such a threat to them, use it to your advantage ;)

Am not a lawyer...but I used to date one...

You shouldn't have a problem should it go to court. Sort of the same situation as the Lexis-Nexis vs Lexus. Lexis-Nexis tried to stop Lexus but lost even though they'd been around longer. They lost because Lexus is cars and Lexis is an electronic database of legal data. Not close enough.

When you register a trademark you have to provide samples of the goods that the trademark will be used with. I'd think the company names and industries are different enough.

Quick off-the-top-of-my-head reaction: On the facts as you describe them, i.e., where it appears you were the first one to use the mark in commerce, YOU might have a cause of action under US trademark and/or cybersquatting law against THEM. It sounds like the facts are still a little hazy, however.

Even if their use of their mark predates your use of your mark, however, it sounds like there are good arguments you could make under US law that you are not infringing their trademarks or squatting on a domain to which they have a right. Again, this would be fact dependent.

All the best.

-- Jon

[This is NOT legal advice, and no attorney-client relationship is formed unless you and I enter into a signed engagement agreement.]