From markwelch_nospam@ca-probate.com Thu Jun 19 08:00:42 1997 Date: Wed, 18 Jun 1997 23:10:42 -0700 From: "Mark J. Welch, Attorney at Law" Reply-To: markwelch_nospam@ca-probate.com Organization: Estate Planning Law Office X-Mailer: Mozilla 3.0 (Win95; I) Newsgroups: dc.jobs,misc.legal,va.jobs To: "Richard Klein" Subject: Re: Infringement of Chevy Chase Bank Trademark Re: http://www.chevychase.com I must admit that I have seen some idiotic things in my career as an attorney, but the letters from the law firm of Shaw Pittman Potts & Trowbridge (http://www.shawpittman.com), representing Chevy Chase Bank (http://www.chevychasebank.com), demanding that no one else can use the name of a city (Chevy Chase, Maryland) in any web site or domain name, really explains why attorneys are held in such low esteem by the public. In the letters posted below by the recipient in several Internet news groups, Amy Wegeles (mailto:Amy_Wergeles@shawpittman.com) effectively claims that "Chevy Chase Bank" owns the name of the city where it is located, and that no other company can use the name of the city in its business name. (In response, others have pointed out that dozens of businesses do use the name of their city in the business name.) By waving the huge financial clout of the bank and its large law firm, Ms. Wegeles is trying to bully a small company (the letter is addressed to "Chevy Chase Computers,"). I think this is nothing less than extortion: give us your domain name for free or we'll beat you up. Sure, we all want a "good" domain name. As a resident and business owner in Pleasanton, California, was unhappy that someone else had registered the domain name "Pleasanton.Com" which I would have liked. But I don't believe that my license to practice law (or the basic moral values that most Americans share) would allow me to send an angry demand letter to the small local company that decided to provide a free community service page at that address, seeking to pry the domain name from them with baseless legal threats. During the next few weeks, every attorney in the country will be laughing at the law firm of Shaw Pittman Potts & Trowbridge, and a million "netizens" will be shaking their heads in disgust at the idiocy and evil of attorneys. Surely, no competent attorney will ever refer an intellectual property matter to the law firm of Shaw Pittman, after this demonstration of incompetence by the head of the firm's trademark group. And I expect that technology clients will avoid this law firm due to its clear lack of understanding of the basic concept of a "domain name." And I think that all clients and attorneys should refrain from sending business to a law firm that seeks to bully and intimidate small businesses with ludicrous demand letters. People are already posting messages on the Internet stating their intent to close their accounts at Chevy Chase Bank, which I think is a reasonable response to this extortion attempt by the bank and its attorneys. =========== text of original email follows ========== Richard P. Klein wrote: > > I received this E-Mail today. Any advice on this would be appreciated. > > >From Amy_Wergeles@shawpittman.com Tue Jun 17 20:02:44 1997 > X-Lotus-FromDomain: SPPT@SPPTFW@WORLDCOM@INTERLIANT @ OUTBOUND > From: "Amy Wergeles" > To: "Richard Klein" > cc: davedris@erols.com > Date: Tue, 17 Jun 1997 19:39:36 -0400 > Subject: Infringement of Chevy Chase Bank Trademark SHAW PITTMAN POTTS & TROWBRIDGE 2300 N Street, NW Washington, DC 20037-1128 202.663-8000 Facsimile 202.663-8007 AMY SPAN WERGELES 202.663.9436 amy_wergeles@shawpittman.com June 17, 1997 By Electronic Mail and Federal Express Mr. Richard P. Klein Chevy Chase Computers, Inc. 8504 Grubb Road Chevy Chase, Maryland 20815 Re: Infringement of Chevy Chase Bank Trademark Dear Mr. Richards: On April 23, 1997, we sent to you via Federal Express a letter concerning your firm's infringement of our client's federally-registered trademark. A copy of this letter is attached for your convenience. Given the seriousness of this matter, we were quite surprised that we did not receive a response from you prior to the May 9, 1997 date requested in our letter. Kindly confirm immediately that you did indeed receive our letter, and provide to us by close of business Friday, June 20, 1997, a statement as to your intentions with respect to this matter. Very truly yours, Amy Span Wergeles Attachment cc: C. Keith McLendon, General Counsel, Chevy Chase Bank, F.S.B. David Driscoll, Chevy Chase Bank, F.S.B. Attachment: SHAW PITTMAN POTTS & TROWBRIDGE 2300 N Street, NW Washington, DC 20037-1128 202.663-8000 Facsimile 202.663-8007 AMY SPAN WERGELES 202.663.9436 amy_wergeles@shawpittman.com April 23, 1997 By Federal Express Mr. Richard P. Klein Chevy Chase Computers, Inc. 8504 Grubb Road Chevy Chase, Maryland 20815 Re: Infringement of Chevy Chase Bank Trademark Dear Mr. Richards: This firm represents Chevy Chase Bank, F.S.B., a federally chartered bank and a leading provider of banking and credit card services to the general public, located in Chevy Chase, Maryland ("Chevy Chase"). Chevy Chase holds numerous federally registered trademarks, including two for the mark "CHEVY CHASE": *U.S. Registration No. 1,529,695 for the mark "CHEVY CHASE" for PERIODICAL BANK REPORTS IN THE NATURE OF BOOKLETS; EMPLOYEE NEWSLETTERS, BROCHURES, LEAFLETS AND PAMPHLETS in International Class 16, and for BANKING SERVICES, NAMELY LOAN FINANCING SERVICES, CREDIT AND LOAN SERVICES, SAVINGS AND OTHER INTEREST ACCOUNT SERVICES, CHECKING ACCOUNT SERVICES, ISSUING TRAVELER'S CHECKS, DIRECT DEPOSIT SERVICES, DIVIDEND TRANSFER SERVICES TO CHECKING AND SAVINGS ACCOUNTS, SAFE DEPOSIT BOX SERVICES, ELECTRONIC BANKING, NAMELY AUTOMATED TELLER MACHINE SERVICES; PROVIDING INVESTMENT RATE INFORMATION BY TELEPHONE; BROKERAGE SERVICES INVOLVING STOCKS, BONDS, OPTIONS AND OTHER SECURITIES; INVESTMENT SERVICES INVOLVING BUSINESS, PROFESSIONAL AND INDIVIDUAL RETIREMENT PLANS, PENSIONS AND OTHER INVESTMENTS; ADMINISTERING HOME, AUTO AND LIFE INSURANCE POLICIES; CREDIT CARD SERVICES; ATM CARD SERVICES; FIDUCIARY AND OTHER TRUST DEPARTMENT SERVICES in International Class 36 ; and *U.S. 0Registration No. 1,204,811 for the mark "CHEVY CHASE" for SAVINGS AND LOAN SERVICES. Chevy Chase has used the CHEVY CHASE marks in commerce in the United States since at least 1969, and these registrations evidence our client's exclusive right to use the term "CHEVY CHASE" in commerce. It has come to our attention that your firm is offering certain services under the name "CHEVY CHASE". We have also learned that your company is operating a homepage on the World Wide Web under this name (http:/www.chevychase.com), and will therefore be promoting itself worldwide under the CHEVY CHASE mark. Your firm's use of the mark CHEVY CHASE will inevitably cause confusion with Chevy Chase's use of its marks for its own services, and is, therefore, an infringement of Chevy Chase's superior trademark rights. We are particularly concerned that our client's customers will see your CHEVY CHASE web site and mistake it for Chevy Chase's. Because Chevy Chase's customers' decisions are based in part on the information contained in a web site, we find your company's use of the CHEVY CHASE mark particularly troublesome. Your firm's activities under the CHEVY CHASE mark constitute an infringement of Chevy Chase's rights under federal trademark laws as well as under state common law and the law of unfair competition. We must therefore insist that you immediately cease all use of the term "CHEVY CHASE". We demand that you immediately: *Cease using any trademark, service mark, logo or trade dress which contains the term "CHEVY CHASE", including the World Wide Web homepage and its address, letterhead, brochures, advertisements, business cards and signage; *Transfer to Chevy Chase all rights to the "chevychase.com" domain name; and *On a date specified in advance in conjunction with Chevy Chase Bank, but by no means later than May 23, 1997, notify the InterNIC Registration Service that you will surrender the "chevychase.com" domain name registration. We require that you forward to us, by May 9, 1997, written confirmation that you intend to comply with the demands set forth above. Chevy Chase's marks are valuable company assets and Chevy Chase relies in great measure on the goodwill its marks represent. It has invested significant resources in developing that goodwill, and will protect its reputation from anything that threatens to diminish its value. Chevy Chase considers this to be an extremely serious matter. Thus, if you fail to provide us with written confirmation that your company intends to comply with the demands set forth above, we will recommend that our client take all necessary steps to protect its rights, including legal action against your company. In any legal action against your company, Chevy Chase will seek an injunction and would be entitled under federal law to seek attorney's fees and other costs as well as compensatory and enhanced damages. In anticipation of your prompt response to this letter, we have recommended to our client that it defer from taking further action until May 9, 1997. Very truly yours, Amy Span Wergeles cc: C. Keith McLendon, General Counsel, Chevy Chase Bank, F.S.B. David Driscoll, Chevy Chase Bank, F.S.B.