We still have yet to receive a response to any of our queries, but Jennine Jacob of The Coveted put out a tweet yesterday letting her followers know that the issue with TheCoveted.com has been resolved without going to court.

Fashionista received an official statement from Erin Kleinberg and Stephanie Mark on the matter:

“After the recent on-line buzz regarding our use of thecoveted.com, we write to advise you that as of tomorrow our business will be rebranded as The Coveteur and henceforth we will be using that name and our new website www.thecoveteur.com. Using the name “The Coveteur”, we will transition to a brand identity that we feel better encapsulates our concept. In regards to the legal issues surrounding our dispute with the-coveted.com, we refer you to our statement on www.thecoveted.com and are happy to be able to put these issues behind us. So, as of February 2, 2011, we will be known as “The Coveteur” and we look forward to bringing you new and exciting content weekly. Thank you for all of your support.

Sincerely,

Erin and Stephanie”

Above all else, changing names was the right move, even if it’s a move that came late. Still if you contrast their statement with Jacob’s:

“I have been advised by the operators of “thecoveted.com” that they are prepared to amicably resolve this matter and that at no time did they have any intention of capitalizing on any goodwill or reputation of “The Coveted” at the-coveted.com. They have indicated that they are in the process of re-branding their project. I and Coveted Media wish Erin and Stephanie the best in their endeavors, look forward to seeing how their venture develops and am happy that we will be able to co-exist with them going forward. I thank all of my supporters for their posts and am hopeful that we can all now put this behind us.”

we can’t help but go back to the same thing that soured us on the Coveted in the first place (besides the possible trademark infringement thing): there’s a distinct feeling of a lack of respect for those who dare to pursue a place in fashion outside the establishment of glossies and big brands.

They feel a different name “better encapsulates their concept”? Why didn’t they use it in the first place? The Coveteur is a good name for their blog, and one that could have saved whatever it cost to have their lawyers (who must have discovered Google by now) draw up that nasty response that did them no favors legally or publicity wise. Not to mention, it was probably freely available for registration from the start, unlike thecoveted.com which was purchased from a domain reseller (likely at a price much higher than the reseller originally paid).

They’re happy to put the legal issues behind them? We bet they are, but not a hint of an apology for their role in kicking the “online buzz” off in the first place? That was a bit of a rhetorical question: surely, they’ve been advised by their attorneys to not accept any responsibility for anything that could be seen as willful violation of Jacob’s trademark, but a little humility here would go a long way – and on that front it looks like they still have quite a way to go.

To end on a more positive note, the petition in support of Jacob’s use of the name ‘The Coveted received more than 1,000 signatures from around the world, including Canada (Kleinberg and Mark’s base), and countries as wide ranging as Indonesia and Ghana.

Dear Erin Kleinberg, Stephanie Mark and Jake Rosenberg,

Congratulations on the successful launch of your new blog. We’ve seen mentions in the New York Times, Refinery29, Racked and many other well regarded publications – which doesn’t include Harper’s Bazaar, Teen Vogue and other publications that employ many of the people who opened their closets to you.

People seem to really enjoy the StyleLikeU meets the Selby content, and those fashion insider connections and press budget have given it a kickoff in a matter of a week that took the other blogs months to achieve.

You may be aware, however, that there’s some confusion over your use of the name The Coveted. According to the lawyers we spoke with, there’s a good chance your use of the name is infringing on the trademark of Jennine Jacob’s The Coveted. We requested comment from you a number of times – by email and by phone – but have yet to hear back from the public relations company who you said would respond to us. Mentions in the Times don’t happen on their own, so maybe they’ve been busy. Signature9 isn’t a major website (yet), so perhaps you just find us too insignificant a publication to reply to.

Sort of like you don’t think confusion can occur between a “personal blog” and a “website featuring interviews and insights into fashion personalities and their influences.” {The Coveted} We actually were confused, and signed the petition acknowledging the confusion. So far 478 other people have as well, so yes, it appears confusion can and has occurred.

No matter, in the event that the lack of response was simply a result of the overwhelming time constraints of conducting interviews, we’ll go ahead and publish our questions here. Please feel free to respond any time you or your representatives would like.

Awaiting your response,

YM Ousley
Publisher & Founding Editor
SIGNATURE9 (TM)

Our Questions for the Owners of TheCoveted.com

• In response to a letter from Jacob’s attorney requesting that you cease using TheCoveted.com, you assert that you were collectively unaware of Jacob’s site. Were you aware of a site called Google? Or Bing?
• If so, did you make an attempt at placing the name “The Coveted” into the search box to see if other sites were using the name prior to purchasing the domain TheCoveted.com in January of this year? If you were not aware of Google or Bing, or similar sites which enable people to search the web, did you request any assistance or make any other efforts at finding out if another site was already using the name?
• Your attorney appears to represent a sizable law firm. Were they also unaware of Google or Bing in researching the viability of a trademark, or rights to use a name?
• Your attorney has claimed the right to initiate “proceedings against Jennine Jacob and Coveted Media LLC seeking damages, injunctive relief and any other appropriate relief without any further notice” in the event that Jacob does not stop engaging in commentary or encouraging others to engage in commentary on the matter. From all information that we’ve been able to find, you are based in Canada, so we’d like to ask if you or your attorney are aware of the First Amendment to the United States Constitution, specifically the portion which does not permit the making of any law “infringing on the freedom of speech” or “infringing on the freedom of the press”?
• Informally speaking, many of the people who have become aware of your site, and of Jacob’s site have expressed sentiments that they enjoy the content of your website, and would continue to visit your site  regardless of the name. Why do you feel it necessary to continue using the name “The Coveted,” having been made aware that there was an existing fashion blog of the same name which pre-dates your own project by nearly 4 years?
• From your attorney’s response, it seems you do not feel that bloggers count as fashion personalities. Is that an accurate representation of your feelings on personal style bloggers?
• Did you consider any other domains, such as TheCovetedCloset.com (currently available) or TheCovetedWardrobe.com (currently available)?

Late last week, Erin Kleinberg, Stephanie Mark and Jake Rosenberg launched a new fashion blog. The design was solid, the content striking and the concept – a peek inside the closets of fashion editors and insiders – met with enthusiasm. The name, however, was met with raised eyebrows. The Coveted is a fashion blog that focuses on Jennine Jacob’s personal style. Over the years, it’s been hosted on a blogspot URL, thecoveted.net and currently resides at the-coveted.com.

As of last week, The Coveted is also the aforementioned newly launched fashion blog, which resides at thecoveted.com.

Confused? Many fashion blog readers were when they realized that the blog at thecoveted.com (no hyphen) was not affiliated with Jacob’s existing blog (the-coveted.com), which has been using the name since 2007.

“Someone owned thecoveted.com for a long time, and did nothing with it,” says Jacob. “When the domain changed hands, I figured it might be a shop or another shopping portal, but certainly not a fashion blog.”

Every major fashion brand has had an experience with someone infringing on their brand online. While The Coveted confusion marks the first case we’ve seen in media, it’s hardly the only recent example of brands colliding over the rights to a web name.

Facebook currently has a lawsuit pending against TeachBook, an online community for teachers, and Lamebook, a humor blog that posts anonymized screenshots of Facebook users’ status updates. The reason? Facebook asserts that the inclusion of the word “book” dilutes their brand. Teachbook successfully trademarked the name, withstanding a challenge by Facebook. Both sites have refused to change their site names, but other sites have when threatened with legal action by Facebook.

So where does that leave the site owner who wants to protect against competitors who borrow a brand name full stop, as well as Goliath companies who have large legal teams? Simply put, it depends on the situation.

Roman Fichman is a New York based attorney who works with startups, and says “owners of trademarks are required to protect their registered marks from unauthorized use or from use that may dilute their mark, otherwise they stand to lose the protections and rights that are afforded to them.” He notes that to the average user, sometimes “this does not ‘jive’ with common sense.”

While the lawsuits may not seem fair “these 800lb gorilla companies are the type to try to go after any portion of their name,” according to Robert Siminski, a Michigan patent and trademark attorney. “Most companies can’t afford to fight Facebook. There aren’t many legal watchdogs willing to take on a Facebook either,” and the company knows this. The issue for both comes down to how likely a user is to be confused, however. “The fact that [Teachbook is] a social networking site as opposed to a business selling books to teachers creates more of an issue with Facebook,” he says. The fact that Lamebook can be presented as a parody or commentary site will put them in a stronger position when they have their day in court.

Simply put, if you find your website name targeted by a big brand, you’ll very likely end up in court if you don’t change your name. Your best shot at winning and keeping the right to your name is to present evidence that your website isn’t likely to be confused with the larger company’s due to different functionality or offerings.

When it comes to the case of the two Coveteds,  the case is a bit more clear.

“On its face, this looks like a stronger case of confusion than the Facebook/Teachbook example,” says Siminski. “Your trademark rights begin upon using the trademark, it has nothing to do with registration. If you have a broad enough audience, in essence you don’t always need a registration.”

“What can I say?” says Jacob. “It’s disappointing [thecoveted.com] never reached out to me. It’s disappointing someone with the last name Kleinberg is leaving less than sensitive comments about my blog on posts about the controversy. Most of all it’s a disappointing shift in this industry that’s been built on the communal support of dedicated bloggers. My hopes are that we can all reach a win-win situation, but at the moment, I’m not certain what that looks like.”

“There is probably a claim [for Jacob] at common law,” says Philip Marcus, a small business lawyer in Maryland who specializes in intellectual property.

“State/common law trademark laws may protect the first party to use a name,” Fichman explains. “A company can send a cease and desist letter based on state or common law trademarks even if that company does not have have a federally registered trademark.” While every case has to be evaluated based on its own facts, Fichman advises the “first thing that a startup should do before choosing a name is to check out the landscape and see if there are any competitors that have similar names that the chosen name may be confused with.” Regardless of size, he says those with or seeking a trademark should “be vigilant and possibly follow in Facebook’s steps in pursuing infringing parties.”

Plainly speaking, Kleinberg and Marks should have chosen a different name for their fashion blog once they became aware it might be confused with an existing, established fashion blog. While Jacobs has not registered for a federal trademark on “the Coveted” yet, she has both the right and responsibility to stop Kleinberg and Marks from using the name if she wants to protect her brand.

Speak Loudly and Early

All agree that while website owners aren’t totally vulnerable without a formal trademark filing, it offers the best protection when protecting or defending your name.

“Registration also means that one can go to a federal district court, instead of a State court where the plaintiff does business,” Marcus explains. “Normally a state court has no power over someone in another state, which may or may not reach the defendant; a federal district court has power over anyone in the US.”

Thecoveted.com is registered in Canada, but Siminski says that United States trademark registration may still offer some protection. “If the majority of the people accessing the site are based in the U.S., it’s likely that someone could enforce rights against them even though they’re based in Canada.”

The first step to protecting the name you’ve built online, or are planning to build, is to be vocal about it. Siminski suggests even a simple statement on the homepage of  your website can “put the public on notice that you’re claiming rights to the trademark.” The domain name alone may not be enough, but merely making that statement strengthens a website owner’s position. “It’s not as good as a federal registration,” he says, “but better than not outwardly claiming trademark rights.”

Federal trademark registration does require an attorney and costs between $1000 and $1200, inclusive of attorney fees, for registrations which are accepted. Staking your claim to a trademark costs nothing.

We’d like to make you aware that we claim Signature9 as a trademark.

Representatives of TheCoveted.com were contacted for comment, but we have not received a response.