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Internet Complicates Trademark Ownership

Thursday, August 14, 2008 – updated: 9:41 am PDT August 15, 2008

The owners of the Victoria Roberts Salon and Spa in Kent simply want to make their customers feel relaxed and beautiful.

Jenni Marshall and Monica Lortie say they invested every dime they had to open late last year.

So when they received a letter in March, demanding the women change the salon's name and pay thousands of dollars, they were scared.

"It definitely added stress to the situation," said Lortie.

Here's what happened.

Before the women booked their first client at 104th Avenue Southeast, they picked a name.

"My daughter's name is Victoria and my son's name is Robert. So we put them together: Victoria Roberts. We liked it. It sounded nice," said Marshall.

Then, they say they did a national trademark search on the name Victoria Roberts.

"We checked all of our bases, and from what we could tell, the name was free to be used, so that's why we chose it," said Lortie.

They remodeled and got to work. All was going well until the letter arrived.

It notified the women that Victoria Roberts Salon and Day Spa in Pawley's Island, South Carolina, was demanding the Kent salon change its name and hand over $100,000!

"It said that we had infringed upon their name, their trade name. Their trademark copied it because we wanted to basically use their good name to gain our success," said Marshall.

The salon owners believe the conflict can be blamed in part on technology.

"When I Google Victory Roberts, her salon does come up," said Marshall.

"If it was just the matter of a phone book, then nobody else would know. But because the Internet is so huge with advertising and getting your name out there, that's where the complication comes in," said Lortie.

Both salons have Web sites and MySpace pages.

According to the letter sent on behalf of the South Carolina salon, the Kent business has copied not only its name and logo, but also portions of its domain name.

The letter accuses Marshall and Lortie of, "slavishly copying" in an "attempt to trade on the reputation and goodwill" of the southern salon, which filed for a national trademark months after the Kent business opened its doors.

"It was about five or six weeks after we did our trade name in Washington that they applied," said Lortie.

The letter also claims such "confusion has and will cause" the South Carolina business "irreparable harm."

It demands a name change and $100,000 or legal steps will be taken.

Lisa Oratz is a Seattle lawyer who specializes in technology. Oratz says trademark is usually limited to geographic area, but that the Internet complicates the issue.

"Local isn't so local anymore. The question is, now, everybody has a Web site. So, if you put a Web site out for your local business, and suddenly, that can be accessed in all 50 states, does that give rights throughout all 50 states? Does that give you recognition?" said Oratz.

Oratz believes the Kent salon owners will most likely not have to change their name and definitely should not have to pay $100,000.

But Oratz thinks they should "lawyer-up," and encourages anyone planning to open a business to hire an attorney to do an exhaustive trademark search before deciding on a name.

"It's always good to run it by a trademark attorney because these issues are so complicated, especially in this digital era," said Oratz.

The Kent owners have sent their own letter in response to the South Carolina salon's demands and may hire legal counsel.

"It was simply a coincidence that fact that it's my kids' names," said Marshall.

When KIRO 7 Consumer Investigator Amy Clancy called the South Caroline salon, she was told the lawsuit was "a private matter."

Meanwhile, now, when a client of either business does and Internet search of Victoria Roberts Salon, in addition to their Web sites, this story will also appear.

Washington's Department of Licensing and the Secretary of State's office tell Clancy that the Kent salon is not violating any state laws or regulations regarding business names or trademarks.

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