Opt-in e-mail marketing services provider NetCreations Inc. is in settlement talks with an e-mail direct marketing company it filed a trademark infringement lawsuit against in March. NetCreations filed another unrelated trademark infringement suit in July.
The first suit, filed March 30 in U.S. District Court for the Southern District of New York, charges that e-Data.com Inc., by using the name Postmaster for its e-mail business, engaged in trademark infringement and unfair competition. NetCreations’ opt-in e-mail network service is called PostMasterDirect.
NetCreations believes it has exclusive rights to the name Postmaster, in reference to e-mail marketing, said Brian Burlant, general counsel for NetCreations.
E-Data allegedly used the name Postmaster and the URL Postmaster.com to market and advertise services similar to NetCreations’, court papers say. The Boca Raton, FL-based e-Data, which also markets opt-in lists, used NetCreations’ “100% opt-in” trademark, the papers continue.
NetCreations further charges that it received “multiple e-mail messages from clients who have been confused about whether [Postmaster] was the same as NetCreations,” according to the documents.
“This is one of the rare trademark cases in which there is evidence of actual confusion of the public,” the papers add, though only “likelihood of confusion” is necessary to prove [WHAT?].
NetCreations’ trademark applications for the names “PostMasterDirect” and “Postmasterdirect.com” are pending in the federal trademark office.
Since talks began, e-Data has changed the name of its e-mail service to E-Direct and has stopped advertising in trade publications under the name Postmaster.com.
Settlement talks have yet to resolve the issue of e-Data’s URL. At press time, keying in (www.postmaster.com) online still delivers e-Data’s e-mail service page.
“We believe that we’re very close to a settlement with e-Data that will resolve the situation amicably for both sides,” said Rosalind Resnick, CEO of NetCreations.
Burlant added that though a settlement appeared imminent, no settlement is a sure thing until the papers are signed.
E-Data’s CEO did not return calls by press time.
The second trademark infringement suit was filed July 21 in the same New York federal court against a Pompano, FL, company doing business as Postmaster Network. According to court papers, in addition to the trademark charge NetCreations is charging unfair competition, dilution and cyber-piracy under the Lanham Act.
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