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RE: GSBN:(OT)David vs Goliath: CertainTeed trademark?



Hi there,

Beleive it or not, I too have received letters from CertainTeed.  My
Canadian website is titled Buildingsolutions.ca.  Note Canadian site.  Note
that I just registered this site within the last year although CertainTedd
has had their trademark for many years.  The trademark of which they speak
is registered in the US, but I too received the nasty letter.  The blunt
force with which they attempted to protect their right rankled me more than
a little.  I am willing to change since I have little invested in the name,
and was trying to be helpful.  GSBN is now the second group of well meaning,
non-profit people whom I know that CertainTeed has bullied (not including
me).

I would suggest the following:
Check out
http://www.uspto.gov/
select Trademarks
then choose New User Form

You will find that there are 55 US registered trademarks with Building
Solutions in their name.  35 are live and at least 5 are related to building
induistry directly.  And they received trademark protection from the US
Patent Office (who should be a more unbiased judge than CertainTeed)
You will find NO registered "Green Building Solutions" .

Now try a search using google and "Building Solutions".  You will find about
2.5 million hits.  Most of them avoid the Certain Teed problem by not
dealing with buildings OR adding a word in front to the Trademark, say, like
Green!

Now check the many hits on Google using "Green Building Solutions" and that
GSBN is clearly not the only user.

Please inform their lawyers of this.  Ask them to write in aletter why
"Green Building Solutions" is not trademarked and how trademark law could be
implied to mean that it is covered by their "Building Solutions" ,mark when
there are several companies with accepted trademarks in the construction
industry that use "Building Solutions" in their trademark?  They will of
course refuse to do so, because they would have to lie on paper to do this.
It is worth recording your request and their non reply however, and costs
you little and CertainTeed a lot (their lawyers are expensive, 10 minutes of
your time is not).  All of this is notwithstanding the fact that building
solutions is a common English phrase.

I beleive you have a strong case.  I would suggest that CertainTeed would be
interested to know that many potential customers could become pissed on very
quickly by the power of the Web, if their firm Ballard Spahr Andrews and
Ingersoll become a little too eager (while of course being well paid for
it).  I am not sure who we know in CertainTeed, but the legal firm is only
representing them, they do not understand the market they are dealing with.

John Straube
Dept of Civil Engineering and School of Architecture
University of Waterloo
Waterloo, Ontario N2L 3G1 CANADA
http://www.civil.uwaterloo.ca/BEG



-----Original Message-----
From: GSBN [mailto:GSBN@...]On Behalf Of
billc_lists@...
Sent: Thursday, August 29, 2002 2:28 AM
To: gsbn@...
Subject: GSBN:(OT)David vs Goliath: CertainTeed trademark?


Hi folks,

Apologies for the cross posts.

I'd like to ask a favor of all you good folks.  We at
sustainablesources.com recently received a "cease and desist" letter from
building materials giant CertainTeed corporation for our use of the
words "Building Solutions" on the main page of our website
(http://sustainablesources.com). Actually, the phrase we use is "Green
Building Solutions".

We feel that the trademark lawyers are working just a little too hard
to justify their existence.

They've asked for a response by August 30.   We'd like to ask you,
the likely users of our site, to help us respond.  If you go to our
main page (http://sustainablesources.com), a second page will open as a
popunder with a simple, two choice response (there's also room for
additional comments, should you so choose).


Please submit your answers - they'll be sent directly to the
trademark lawyers, and copied to us.

Thanks for your assistance.


--
Bill Christensen
billc@...

Green Building Professionals Directory: http://directory.sustainablesources.com
Sustainable Building Calendar: http://SustainableSources.com/calendar/
Green Real Estate: http://SustainableSources.com/realestate/
Straw Bale Registry: http://sbregistry.sustainablesources.com/