C&D letter to a blogger

September 10, 2009 12:13 PM

I am writing on behalf of another blogger who is in need of advice and recently received a C&D from a law firm stating that the name of her frugal wordpress blog infringed on the rights of another Miami Herald blog- specifically the word "frugalista" - She is looking for assistance should she decline to change the name of her site.

Here is the link to the C&D
There seem to be many people who use the word "frugalista" so the lawyers have quite a road ahead of them unless they are only going after those blogs/websites that are in the Florida area.
I appreciate your info and will pass along this link to her.

posted by Frugalforlife to law & government (26 comments total)

[removed links, please put them in your profile if you want people to look at them, thanks.]
posted by jessamyn at 12:16 PM on September 10

IANAL, but my bf is an intellectual property attorney.

the first thing that pops into my head is how long as your friend's blog been up? if she was using the name for a long time before this other person she may have a somewhat shakey leg to stand on. does have posts dating back years before this other person had their column in the Miami Herald? it's a long shot, but it's all i can think of.

and yes, they will go after regional use - so they are more likely to target use of the name in the area where the "confusingly similar" stuff may occur.

i know that if i asked my bf about this, he would say that she needs to call an IP attorney and pay the $50 or whatever to have a 30 min sit down if it's really that important to her. after the MH is a big well known paper with a team of lawyers. she probably can't do much on her own.
posted by sio42 at 12:22 PM on September 10 [2 favorites]

This NYT On Language post describes some of the etymology of the coinage "frugalista" and cites the MH, but seemingly not your friend's blog.

IANYL and I am not an IP attorney, and this is not legal advice. But if it were me, the calculus would be "am I going to win an IP case against the MH over a name that I did not devise myself" and not "boy, the MH sure has to sue a lot of people if they really wanted to protect their IP."

But then, that's lawsuit-averse old me. How about the Jackson Thriftist instead? Or Thrifty Jackson (the little-known Jackson family member excluded from the Jackson 5 for being too cheap)?

Again, not legal or blog-naming advice.
posted by Admiral Haddock at 12:33 PM on September 10

You will get any manner of unhelpful answers in ask.me. Your friend should chat with the lawyers at her friendly local Volunteer Lawyers for the Arts organization. Chances are excellent they have a ready-made self-help package for responding to cease and desist requests. I am unaware of any volunteer lawyers for cyberrights organizations, but that does not mean they don't exist.
posted by crush-onastick at 12:36 PM on September 10

She is looking for assistance should she decline to change the name of her site.

She should contact a competent trademark attorney in her area. Ms. McNeal has a registered trademark for the word and may well sue if your friend 'declines to change the name of her site.' Should that occur, a lawyer is a practical necessity, so if that's the course your friend wants to pursue, she may as well find a lawyer now rather than waiting until she is served with the complaint.

So while this is a terrible place for legal advice, here are some facts that may be of some value during the initial consultation with the attorney: The first occurrence of the word 'frugalista' on Google Groups was on January 12, 2000.

The word was first used in print on February 11, 2005 in the Palm Beach Post (“OUR FRUGALISTA IS GETTING MARRIED!”, Palm Beach Post (FL), page 4E).

The word was used on a blog on May 12, 2007. That blog ('Making Good Use') could reasonably be described as "featuring spending habits, saving tips, consumer information and deals, and other financial advice." Somewhat problematically, the blog is based in the UK.

The word has been used as the title of the blog The Frugalista since September 9, 2007. That blog is more a general personal blog, but there is some discussion of economics and dealing with the down economy, saving money, etc.
posted by jedicus at 12:40 PM on September 10

This is just a thought, but looking at Google I'm uncovering a slew of blogs and resources using the term. I am suspecting the law office is just putting "frugalista" through a grinder and cranking out C&D letters. I would look at maybe contacting those webmasters and seeing if they are having similar problems with Miami Herald or have contacted attorneys themselves.

For what it's worth it seems a lot of folks on the Internet have ignored C&Ds of this type with no further consequences -- not that I am advocating such a thing without legal advice, but this letter could be the equivalent of a yappy dog. Pirate Bay's always had that C&D toilet paper wall going on, though RIAA obviously called their bluff.
posted by crapmatic at 12:40 PM on September 10

Everything I say here is a layman's opinion. I am not a lawyer, and this is not legal advice.

The person who trademarked this seems to have trademarked it long before your friend started her blog last Tuesday. The trademark application says that "first use in commerce" was on January 31, 2008.

So it's a real losing battle.

I'll point out that the URL the attorney included in the cease-and-desist letter isn't a valid URL: it leads to a page speaking to the fact that his search session has expired. URLs that you grab during a TESS search engine aren't permalinks.

Perhaps "The Blog That Was Formerly Named Jackson Frugalista Until Natalie McNeal, a Miami Herald Reporter, Decided to Send Us a Cease-and-Desist Letter Because She Trademarked the Word 'Frugalista'"? Bad P.R. could be a bit embarrassing ...
posted by WCityMike at 12:43 PM on September 10 [5 favorites]

Looking at the application, it was made in 2008 (go here and search for frugalista). It's the unregistered kind (trademark on wikipedia), which is still defensible in the USA, but means the owner will go after regional use only. Which I suppose still covers Jacksonville. And the blog is very recent, so your friend doesn't have much of an angle.
posted by Tobu at 12:44 PM on September 10

Looking at the application, it was made in 2008 (go here and search for frugalista). It's the unregistered kind (trademark on wikipedia), which is still defensible in the USA, but means the owner will go after regional use only.

I don't know what you mean by that. There is one application for Frugalista and one registered trademark, both owned by Ms. McNeal (I'm ignoring the application owned by Target). The one covering blogs is very much a registered trademark, Reg. No. 3532912. The C&D is confusingly worded as it mentions an application and a serial number rather than a registration number, but there's definitely a registered trademark at issue here.

Pirate Bay's always had that C&D toilet paper wall going on, though RIAA obviously called their bluff.

Not to derail, but the Pirate Bay and its owners have had some pretty substantial fines levied against them. They ignored those threats at their own peril, and it finally caught up with them. They should serve as an example of why it's a bad idea to ignore a C&D, not an example of getting away with it.
posted by jedicus at 12:49 PM on September 10

Well, thank you to whatever moderator noticed my spelling mistake and fixed it and deleted my "damn it" complaint. :-)

I'll also point out to your friend that the Herald Frugalista had a NPR story on them in April '08 ... my (again, layman's) understanding is that national press like that assists them in staking their claim.

If I were your friend, I think the cost-benefit ratio on this situation suggests she change her blog's name — especially since it's only been around a few days more than a week.
posted by WCityMike at 12:52 PM on September 10

I'm not an IP attorney. Don't take this as legal advice because, despite my moniker, this is absolutely NOT a legal maven/lawyerly reaction to this question.

Frugalista? As a trademark? psh.

I'll bet that Ms. Frugalista-as-Trademark is having a fit over Target's recent ad campaign.

If that were my blog, I'd ignore Ms. McNeal's attorney and continue blogging, perhaps with my very next post being: "Wow, a C&D demanding that I stop using the word Frugalista! Take note, Dear Readers, I am not this person and am not affiliated with said blog."

But, then, I'm kind of known for poking at sleeping bears.

(On preview: Pirate Bay, IIRC, was in deep for downloading/allowing the downloading of copyrighted material, not for the use of commonly known word. Different application of a legal concept and not really applicable here.)
posted by LOLAttorney2009 at 12:55 PM on September 10 [1 favorite]

This idea just came to me. I know you didn't ask for it.

I'm assuming, since I've usually seen "frugalista" to describe a female, that your friend is a woman.

If so, perhaps play off the fact that the last three letters of "frugal" are Gal, e.g., "Jackson FruGal"?

That'd especially work with your friend's e-mail address being JacksonFrugalGal, at least per the C&D letter you posted.

I've no idea if that has any prior art on it.
posted by WCityMike at 1:07 PM on September 10

When I said "I've usually seen 'frugalista' to describe", I meant to say "I've usually seen the '-ista' suffix to describe ... ".
posted by WCityMike at 1:08 PM on September 10

I appreciaste all your opinions both for myself and the other blogger.
posted by Frugalforlife at 1:14 PM on September 10

Someone started a blog with the same name as mine about a year or two after I had. I owned the domain already, too--she was just using the title and a Blogspot subdomain. I sent her a note, she was really nice about it, changed the name of her blog to something else, and now she is a famous blogger with a book out.

So, come up with an even better name, is my suggestion. I am not a lawyer, I don't know anything about IP, I just know that if someone else gets there first, your best move is just to go back to the drawing board for names. There's no point in trying to brand yourself with a name that's already in use (especially if it's in use by "many people"), if the intent is to turn the blog into anything special.
posted by padraigin at 1:17 PM on September 10

Look at the Google Street View of the firm's address.
posted by WCityMike at 1:20 PM on September 10

Has your friend really only been writing the blog for 10 days? Wordpress isn't letting me go back further than that.

"Frugalista" has been a registered trademark for almost a year, so your friend might have to attack it on those grounds, i.e. invalidating the trademark.
posted by rhizome at 1:24 PM on September 10

Has your friend really only been writing the blog for 10 days? Wordpress isn't letting me go back further than that. (rhizome)

Since her 9/1/09 post is a "hi, everybody" post, yes, that's what it looks like.
posted by WCityMike at 1:31 PM on September 10

[nothing personal guys but can we not do the "link to the attorney's office" thing here, it tends to come back and bite mefi on the ass.]
posted by jessamyn at 1:58 PM on September 10

There is some confusion in this thread over what trademark rights are and how they are established, with elements of patent and copyrights being brought in. In the United States trademark rights arise from use. Merely using your mark establishes some rights but these rights only extend geographically to the areas in which you use the mark and only extend to the product category for which you use the mark. A Federal Registration extends those rights geographically to the entire country. Of course geography is all muddied up when the use is on a blog.

Someone else's prior use of the word, but use not in a trademark sense, would not prevent you from obtaining trademark rights on the word if you use it as your trademark. Novelty is not required. However, the word can not be too descriptive or generic. I couldn't claim trademark rights in the mark "Truck Repair" if my business was indeed truck repair. There may be an issue with the word Frugalista being descriptive or generic. Only your attorney should answer that question for you.

A trademark is an indication of source. When you buy Coca Cola you know that it is not Walmart cola. Infringement occurs through a likelihood of confusion. The same on a blog. If your blog is about the same subject as the trademarked blog there could be a likelihood of confusion. Again, only your attorney can really answer this question for you. Even then, these questions are never really answered in black and white, but involve all shades of grey.

This brings up the issue of how much money is it worth to have this fight even if you and your lawyer determine that you have solid arguments? Perhaps the easier thing given that this is a new blog is to rename it. Since the word has entered common usage and is even in at least one dictionary she can hardly stop you from using it, as long as your use is not in the trademark sense. Your lawyer can help you distinguish these uses, but putting it in a blog title seems pretty clearly a trademark use, while referring to people seeking a frugal lifestyle seems more common use. Again, depending upon how you use the word on your blog this issue could get pretty grey too.

People in the thread have given you some good things to think about when consulting with the attorney. if you do give thought to a new name do some searching and discuss that with your attorney as well perhaps.
posted by caddis at 2:04 PM on September 10 [1 favorite]

I really have no idea what your friend's chances of winning a challenge are. But given that the C&D seems to me at least plausible, how unpleasant and expensive a challenge would be (even if it's won, though it could be much worse if lost), and how little brand identity there is to lose in changing the name of a week-old blog, if I were your friend, I'd be signing up for jacksonfrugalgal.wordpress.com and moving on.
posted by Zed at 2:07 PM on September 10

Frankly, this is one of the most rediculous incarnations of this question I have ever seen. Ten days? Ten days? Your friend has been writing this blog for ten days?

This is not even a question of right vs wrong - this is reality, where it's a question of cost. With a ten day old blog, your friend has nothing worth defending.

I would also advise you and the other commenters to step back and see the bigger picture here. Given Target's recent Frugalista campaign, this woman is going to make a really big show of consistantly and vigorously defending her trademark. Shortly after that, she's going to go shopping at her local big box, deep-pockets superstore, looking for underpants that have "CHA-CHING" emblazoned across the arse - in diamonds.
posted by DarlingBri at 2:21 PM on September 10 [6 favorites]

I can't see how she has any case against Target, but then that is not surprising because I am sure they have a bevy of trademark attorneys on staff.
posted by caddis at 5:54 PM on September 10

Can't really answer your question but I can correct this:

The word was first used in print on February 11, 2005 in the Palm Beach Post (“OUR FRUGALISTA IS GETTING MARRIED!”, Palm Beach Post (FL), page 4E).

Nexis says the first use in the computer database was The Palm Beach Post
Jan 2, 2005 Sunday
Pg. 1D


They had a shopping columnist/blurb writer called the Frugalista. Her name is/was Aime Palmer and I bet she has a good claim on the name.
posted by CunningLinguist at 6:58 PM on September 10

They had a shopping columnist/blurb writer called the Frugalista. Her name is/was Aime Palmer and I bet she has a good claim on the name.

Yes but did she keep using the name or did she abandon it? These legal issues are fraught with little twists and turns.
posted by caddis at 8:01 PM on September 10 [1 favorite]

nthing, just change the name of the blog. It's only 10 days, there has hardly been any google juice built up with it. Knowing when fight is half the battle.
posted by IndigoSkye at 7:23 PM on September 11