BlogHer - Sk*rt Forced To Change Name To Avoid Trademark Lawsuit - Comments

The Original Skirt Magazine Rocks

Internet Marketing Badger — Wed, 14 May 2008 19:56:31 -0500

The original Skirt Magazine has been around at least since 1998 or so, and they rock! They have always had a strong presence in the South. This magazine has some of the highest quality articles and first person essays from women around the U.S., and their brand has always been very strong.

When I was a columnist for them for a year or so (roughly 1999 through 2000) I knew they were headed for great things. I'm very glad to hear that they are moving into the social media world and I know that their enterprise will be very successful.

There is no question that the other Sk*rt's trademark attorney really dropped the ball on this one. Even the most basic of trademark due diligence should have turned up this popular magazine and its website network, and anyone with half a brain would have understood the potential problems with infringement in registering a similar name targeting a similar demographic.

But for their sake I'm very glad that they are able to move on and relaunch - and I'm sure they'll do really well with their revamped site.

I just wanted to share from both the perspective of a trademark owner and also a former writer for the original (and one and only, in my opinion!) Skirt that the whole thing seems very odd to me - that nobody would have come across the potential infringement problem a lot earlier in the game. Long before I was even allowed to apply for a trademark there was a strong due diligence process that unearthed many different businesses that my attorney and I needed to examine carefully as I planned the future of my business.

Perhaps the problem here, as the Sk*rt owners mentioned, is that they came to the business part late and were busy just intuitively managing a popular and interesting site.

While that's wonderful, trademark infringement is a serious issue and many aspects of trademark law as affected by new media are still evolving and changing to this day. Perhaps they were working with someone inexperienced with online media. Even with my team I had to have my attorney go back and forth with the trademark office several times to carefully explain and lay out the differences between an online newsletter, a blog, a website, etc. which haven't been very well defined yet within the world of trademark law.

In many ways the trademark office is still very much behind the times, and it definitely needs to catch up so more people like the Sk*rt ladies don't have to deal with all these complicated and stressful problems.

Here's wishing the players on both side of this case the very best with their respective business ventures.

The Internet Marketing Badger, otherwise known as Jennifer Shepherd, provides user-friendly tips on making money online as well as humorous rants about all things Internet Marketing related at http://www.internetmarketingbadger.com.

I take issue with using

Dana Loesch — Mon, 12 May 2008 12:56:00 -0500

I take issue with using the phrase “on a rampage.” I think
that assigns a negative value to people who are simply acting to protect intellectual
property. While I'm glad to see this topic getting more attention it does a disservice to raising awareness about the issue when it's addressed as such.

That being said, it is my opinion that the ladies of Sk*rt seemingly
received some very bad legal advice. The term isn’t a common phrase when used
commercially and if it were, the entire dispute would’ve been tossed. As much
as I like what they do, it seems Sk*rt made some bad choices, such as not
protecting their name right out of the starting block. Skirt Mag comes across
as semi-predatory in business and honestly, that’s just how it works in
business. Entities act to protect their interests and you can't fault them for that as we all would do the same.

This is yet another example of how and when you should
protect your intellectual property. If you take any step in branding yourself you
need to think about the big picture. The medium of the Web doesn’t diminish the
severity or importance intellectual property law.

Also, I think the name “Kirtsy” is exponentially cleverer
than “skirt.” I like ot SO much better and it has a young connotation. I wish the Sk*rt ladies all the best and greatly respect how they handled the matter
professionally and decorously.

Dana
Mamalogues.com

on KFTK 97.1 FM/Fox News Radio

Support by Voting For A New Name

Elana Centor — Thu, 01 May 2008 21:18:18 -0500

During our chat they shared that Digg is 95% male..so having Sk*rt is important for women bloggers. Also, they said that while Digg ranks stories by participants voting, women, they have discovered do not like to vote..so last March they got rid of voting on Sk*rt and instead use click throughs to stories to determine which stories makes their front page.

elana
Blogher Contributing Editor,Business&CareersFunnyBusiness

That sucks! But I'm glad

Trisha — Thu, 01 May 2008 19:55:00 -0500

That sucks! But I'm glad you wrote about it! I've never heard of the site before but it always bothered me that Digg is so male oriented.

I'll definitely get involved with the site once they are back up!

Ideas For Women blog

How best...

nelle2nelle — Thu, 01 May 2008 19:42:03 -0500

to offer support to the name change three? I'm annoyed, but not at all surprised, they were squeezed this way. My gosh, Apple the computer company squished Apple the Beatle company, and that seemed almost like some sort of generational heresy.

Anyway, what is the most positive way the rest of us can send a good message here?

nelle

Sk*rt Forced To Change Name To Avoid Trademark Lawsuit

Elana Centor — Thu, 01 May 2008 18:57:04 -0500

TThe Trademark Goddesses are on a rampage. Just last week, BlogHer Editor Rita Arens wrote a comprehensive post on the issue of Trademarks and Mommy Bloggers.

On the heels of that essay came the news this week that Sk*rt--the Digg-style site focused on women's content is being forced to change it's their name because of a potential trademark lawsuit.

Earlier this week, the three mommy bloggers who started Sk*rt,Gabrielle Blair, Laura MAyes, and Laurie Smithwick put up a a 24 hour notice on the Sk*rt site informing readers that they were being forced to change their names to avoid a Trademark lawsuit from Skirt magazine which is owned by Morris Publishing-- a Georgia based media conglomerate in radio, newspaper, event marketing, outdoor advertising and magazine publishing.

The notice also said that sk*rt.com was not related to skirt magazine. Sk*rt is being forced to move quickly. And so this week they are running a contest to come up with a new name. From ReadWriteWeb

Here are the 10 names that users are choosing between for the new Sk*rt. Which one is your favorite? Mine's the sixth on this list. Voting ends Friday night at midnight, presumably PST. You can vote on the company blog.

Name: Jupe Domain Name: jupejupe.com or jupeit.com, we can’t decide.

Name: Lemonade (As in when life hands you lemons…)
Domain Name: Lemona.de (Kinda weird because it doesn’t even need a .com, but that’s also why we like it.)

Name: Kirtsy
Domain Name: kirtsy.com

Name: Phlox
Domain Name: phlox.com

Name: Mesosoup
Domain Name: mesosoup.com

Name: SheSaw
Domain Name: shesaw.com

Name: Fierst
Domain Name: fierst.com

Name: GabOHla
Domain Name: gabohla.com

Name:19rocks (The 19th amendment rocks.) Actually this can be 19 anything. Ideas?
Domain Name: 19rocks.com

Name: HolyMoses
Domain Name: holymos.es

According to ReadWriteWeb silicon valley is very interested in this business so the question is, what happened? Earlier this week, I had a conversation with Gabrielle, Laurie and Laura about the name change, what happened, lessons learned and the future.

Just as a bit of background, these three women decided to create Sk*rt before they ever met in person. Their relationship began through blogging. Two of the partners met for the first time face to face at BlogHer '07 in Chicago and the other partners met face to face for the first time at BlogHer business.

In February , 2007 Sk*rt launched its beta. It went live in June and promptly hit the front page of Digg. So much for soft launches. Gabrielle, Laurie and Laura did not immediately apply for a trademark because they actually started Sk*rt before they had an actual business entity.

Nevertheless, they did consult with an attorney. Says Gabrielle,

"Laurie talked to a lawyer who said skirt was a common domain word and she indicated in her professional opinion we were fine."

At the time, Skirt the magazine was operating under the URL skirtmag.com. It was a landing page for a print magazine in a handful of southern cities. There was a URL for skirt.com and that was for selling skirts.

Gabrielle, Laurie and Laura say that after that initial search and the confirmation from their attorney, they didn't give skirt- the magazine a second thought until December 2007 when they were hit with a complaint saying that sk*rt was trying to syphon traffic from the magazine.

What they didn't know at the time was that sometime between their original search, skirt the magazine bought the domain name skirt.com. In September 2007, three months after Sk*rt made the front page of Digg, the repurposed skirt.com launched. Instead of being a launch page for its magazine, the new skirt.com is striving to be an interactive site.

The UDRP arbitration found in favor of Sk*rt.com and Gabrielle, Laurie and Laura thought the threats of lawsuits were behind them. That arbitration cost them half of their entire year's operating budget.

However, Morris Publishing decided to up the anty and sent them a notice that unless they changed their name, they would file a lawsuit for Trademark infringement. After checking with their attorneys and learning that fighting Morris could cost them up to $500,000, the sk*rt chicks decided it was time to move on.

We are just three people. We don't have large funded backers. It didn't feel right.We're pretty peaceful people. The idea of fighting it ut for that that is just a name, just didn't feel right," explained Gabrielle.

Added Laura,

"Frankly it would take a lot of time, money and energy to go into a battle and there is just so much time , money and energy. We don't want to allocate those resources over fighting someone over a hyphen."

The Sk*rt chicks also said that even if they won this court fight they were convinced that Morris Publishing would continue the fight.

And so, they are changing their name. They hope people will vote on their new name. They indicate that as soon as the name in chosen, they will do a new design and think they will be ready to launch a new site in about 48 hours. That's the easy part.

There are about 20,000 users who have links,widgets and Sk*rt buttons on the bottom of blog posts that need to be changed. Those changes will have to make manually.

Laurie is concerned about the rubber band effect. " When there's a long line at a stop light and when the light turns green the first car moves just fine and so does the second car but by the time you get to the 20th car, it may not even move. We move fast but we have to keep looking back and making sure everyone is moving with us. Our goal is to not lose anybody in the switch."

While this has been an emotional time Gabrielle, Laurie and Laura say it was their choice to change the name.

"We want to keep our happy."

Elana blogs about business culture at FunnyBusiness