Originally published as Trademark Infringement.
The Registered trademark DISASTER MASTERS® was first used in interstate commerce on July 1, 1980.
Its registration number 1,208,996 was issued by the Patent and Trademark office on Sept 14, 1982 in the United States in Class 37, Services.
Subsequently the mark was registered with the Canadian Trademark office in the same Classes.
Later on, DISASTER MASTERS added 2 more classes. Class 14 for apparel related products and Class 25 for jewelry related products.
This well-defined and federal court-tested trademark provides that:
No person or entity is permitted to use the words DISASTER MASTER or DISASTER MASTERS to identify any company that provides services to the order and specification of others including planning, maintenance, crisis management, construction or restorations of any sort anywhere in North America. Nor can they print DISASTER MASTERS on a garment of any kind.
Should a film or TV show producer wanted to make a movie or a television series named DISASTER MASTERS their lawyers would need to secure a license to do so from DISASTER MASTERS, INC., a New York corporation.
The development, marketing and protection of patents and trademarks are a costly affair, which is why Federal Trademarks exist. Imagine what would happen if anyone could make and sell their version of Coke or Pepsi.
Coke or Pepsi Beverages of Miami would not have a chance in a court of law, nor would Exxon of New York City.
Registered trademarks provide the trademark owner(s) with federal protection so the mark cannot be diluted in any way whatsoever and to insure that consumers get consistent products and services. It is illegal for any person or entity to receive pecuniary benefits using the words DISASTER MASTERS to identify any product or service in North American without permission or a license from the trademark owner.
Incorporate First, Regret it Later
Unfortunately far too many entrepreneurs have enter into business over the past 30 years who have adapted or adopted DISASTER MASTERS trademark to identify their new company. Eventually we find out about their operation and then the infringers run into serious trouble as soon as we learn of them diluting or abusing our DISASTER MASTERS trademark.
This usually occurs when a customer dials a local or toll free information service and get one of our international phone numbers specifically 1 800 THE PLAN or 1 800 THE CLAIM.
Protecting Our Trademark
Once we learn of any infringement, we take all necessary steps to protect our valuable trademark to whatever extent necessary. These actions on our part are time consuming and costly therefore we document our expenses in time, overhead, out of pocket, that the infringer forced us to undergo in the form of money damages. Lost goodwill also is accounted for in perusing damages however goodwill has a long tail which takes several years to inventory the harm infringer has done to our Trademark. We expect any and every entity who participates in damaging the owners of our Trademark to pay for the damages they have caused or may cause in the future.
The development and promotion of a Trademark is a very costly event in time and hard dollars for its owner. When an infringer or their attorney (s) fail to do due diligence to discover if their new entity will infringe or damage an existing trademark, that failure falls into one of two categories.
Outright theft or ignorance and neither are acceptable to us.
An infringer’s ignorance of the law, or willful method of using an existing trademark to promote their business by using the the words DISASTER MASTER(S) Trademark will have repercussions.
Any infringement to our Trademark after 1996 is clearly thievery inasmuch as DISASTERMASTERS.COM has existed on the Internet since 1995 along with several hundred references to DISASTER MASTERS in search engines around world. We can’t imagine anyone so ignorant that they could claim ignorance of this Trademark.
As such, we fully expect an infringer to pay us for our time and out of pocket expense we have to invest because of the infringements.
When we created the DISASTER MASTERS mark in 1980 we invested thousands of dollars to assure we would never create damages for anyone.
Having been in Federal Court against an out-of-state software company who tried to register DISASTER MASTER during the court proceedings we know the outcome lost.
There are two ways for an infringer to get us off of their case.
The fastest and easiest way is to do what we need to protect our property and we will do what we can to end the case quickly and fairly.
Because the law and the truth is on our side, when infringers think that they can get a better deal by hiring lawyers, going to a NY Federal court and staying up late at night scheming on ways to avoid dealing with us it wont work for you.
What will work to your advantage is to immediately cease and desist using any and all reference to DISASTER MASTERS in any form whatsoever as specifically detailed herein.
If you say "sue me"… We will retain the expensive services of several winning law firms wherein you and or your lawyers will answer to a Federal judge in the Southern District New York.
When these angry snarling lawyers file an action against you it will be complete and accurate with out any kind of allowance for negations because you had the choice to cure and chose to waste your money on hungry lawyer who knows in advance how much it is going to cost you to lose the case but will take your hard earned dollars any how and base you defense on the fact that your firm is not in NY and is not competing with the DISASTER MASERS Mark.
If you do that you will pay a high legal and time price that you created, not us.
These ugly lawyers very expensive and have several hundred years of collective experience in the patent, trademark, copyright and intellectual property law business.
When or if an infringer fails to immediately cease using DISASTER MASTERS for pecuniary reasons we then commence to measure the amount of time, legal expenses and the loss of goodwill we encounter to rectify the infringement.
If, in our opinion, the infringer stonewalls, delays or makes it difficult for us to resolve ALL of the infringements we then hire an accountant to document the time, and expenses we incur and then we move to have the infringer reimburse us for the damages caused as a result of the infringement and the cost to rectify the matter. You get to pay their bills.
In the case of Class 37 Services, the first thing we do is to review the internet directories, the local Yellow Page advertising books in the infringer’s marketing area to see how much damage has been created by the infringer’s advertising DISASTER MASTERS name in phone books with phone numbers that we do not yet control.
Providing that the infringer has never secured a local or toll free telephone number and listed it, as DISASTER MASTERS (cleaners, auto fixers, related supplies or equipment, fire, flood restorations etc.) the issue of residual pecuniary benefits may not apply. If, however, an infringer has placed the DISASTER MASTERS®name and their telephone numbers in any kind or type of annual directory, then, the only way that we can protect our good and valuable trademark and to remedy the infringement is to have all of the telephone numbers that are advertised as DISASTER MASTERS placed in our name and directed to our corporate offices so that we can provide the calling consumers with factual information about our services and assistance for DISASTER MASTERS products and services. Disconnecting or changing a published number is NOT an option.
Logic for Reparation Methodology
When a local telephone number that advertises DISASTER MASTERS is simply disconnected to cure the infringement, all new callers will get the impression that DISASTER MASTERS is no longer in business, which is untrue and very damaging to the DISASTER MASTERS mark.
Conversely, if we were to allow the infringer to continue to use a telephone number(s) web sites, domains and places like Yellow Page advertising, then,we would not be able to properly manage DISASTER MASTERS’ mark and our public image. Moreover, the infringer would continue to reap financial rewards using our name and perhaps damage or alter the public’s perception of what DISASTER MASTERS is and does. This is not acceptable.
We know that when any telephone number advertised as DISASTER MASTERS is answered by unauthorized or unlicensed people this act clearly creates money damages as well as damage to our hard earned and well deserved reputation.
Initial Plan of Action
Depending on which state the infringer is located; our corporate offices will either send a "Cease and Desist" letter or retain a local patent and trademark attorney to represent our interest.
Our goal is to give the infringer sufficient notice and evidence for them to want to work with us to provide them with the easiest and cheapest solution to resolve the matter. It is best for all parties. Providing the infringer can qualify by meeting our requirements, we may provide a limited license for a fee until the infringer can select a new company identity and all residual directory advertising has run its course. Yellow page directories have a shelf life of 3 to 5 years before they are 80% replaced.
History of Infringers
Since DISASTER MASTERS is such a great and memorable name to identify certain products and services, on more than 11 occasions, individuals around the US and Canada opened a business as DISASTER MASTER Recovery Software or DISASTER MASTER, or Disaster Masters Restoration, or DISASTER MASTERS Cleaning or DISASTER MASTERS of "some city" thinking that they may not be found or infringe on the DISASTER MASTERS mark but then later learned the expensive way that a Federal Trademark supercedes all state registrations.
The first infringer was a Florida man in 1984. He was not happy when he learned that his attorney had failed to inform him that Federal Trademarks supersede states when it comes interstate commerce. Due to either ignorance or arrogance, Mr. Norton of Lake Worth Road Suite 222 Lake Worth Florida 33463 was forced to cease and desist using DISASTER MASTERS Inc. a Florida Corporation.
Fair and Reasonable Remedies
Some infringers felt that they should only be required to change their name
from Disaster Masters to Some Other Disaster Services etc. yet retain the local
and toll free telephone numbers that they caused to be published in annual
directories (Yellow Pages) using our mark DISASTER MASTERS to attract customers.
This remedy does not work in that it allows the infringer to continue to reap undue rewards through the use of our trademark and perhaps seriously damage the public’s perception of the mark. If DISASTER MASTERS name is in a directory with a phone number that you answer or control, you are still infringing on our trademark.
Best and Cheapest Solution
Other than retaining the services of an attorney and having a Federal Judge decide the outcome the only economic viable alternative available for the infringer is to immediately destroy any and all paper, building signs, truck lettering, flyers, letterhead, and any dynamic documents that have the trademark DISASTER MASTERS printed, painted, embossed or labeled and document to us that this has been done.
Printed Directories, Phone Numbers, Internet Domains and Web Site Matters
Inasmuch as some infringers placed DISASTER MASTERS name in association directories, print advertising, radio or TV ads, periodicals or Yellow Page directories, this means that without our permission the DISASTER MASTERS mark is now in tens of thousands of listings in print media, telephone books. This fact creates even a larger problem to cure the infringement. Moreover, it also creates consequential money damages.
For obvious reasons, an infringer can never be allowed to retain or manage any telephone number(s) domains or web sites that advertise DISASTER MASTERS in any way whatsoever.
or any other combination that could cause confusion for consumers about the
DISASTER MASTERS mark or show up in any search engine on the web as DISASTER
Services vs. Products
A service business trademark is unlike a product in that the infringers open telephone numbers and manage to place DISASTER MASTERS in the telephone company yellow pages. Some people manage to get 800 or 888 or 877 Toll Free numbers, which appear across the US and Canada that really create confusion in the marketplace as to the rightful owner of this mark. The only cure for this infringement is for the infringer to convey these numbers to the management of DISASTER MASTERS so that we can control the quality of this mark for the public.
Consequential Money Damages
The illegal use of a registered trademark always creates consequential money damages for the rightful owners of a trademark. The extent of the abuse of the DISASTER MASTERS mark depends on how much time, labor, resources, attorney fees, goodwill damages, out of pocket expenses are required for the trademark owners to repair or arrest the ongoing infringements.
Directory advertising has an average 5 year shelf life before 80 percent of the yellow page books are finally replaced by current ones therefore we have to deal with this fact for 5 or more years after the infringer ceases and desists which causes consequential damages that cost untold dollars in time and reparations to callers who have read the ads.
DISASTER MASTERS Inc. vs. Recovery Management Inc. U.S. Southern District New York.
For infringers who believe that they may be able to outmaneuver the principals of DISASTER MASTERS we provide herein a case history of a software company based in Massachusetts who adopted the DISASTER MASTERS trademark to identify their only software product, which they named DISASTER MASTER.
When we requested that Recovery Management cease and desist using DISASTER MASTER to identify their software, Recovery Management stood fast and decided that they could go to Federal Court and win the case.
Not only did Recovery Management lose, the Honorable Judge Sweet of the United State District Court, Southern District of New York in his opinion Civ 2469 RWS awarded Disaster Masters reimbursement of legal fees, plus ordered Recovery Management to pay for corrective advertising for DISASTER MASTERS in all trade journals and also they had to send 1st class mail to each of Recovery Management’s customers with a notice that Recovery Management had lost the case in the United States Federal Court.
Recovery Management could have avoided this huge expense of time, money and wasted energy with cooperation but they chose to be arrogant and lost. Big time. Today Recovery Management is out of business
Feel free to contact the trademark owner by calling 1 800 The Plan and ask to speak to Ron Alford founder and legal owner of the registered trademark DISASTER MASTERS.
Persons wanting more information on the people who lost a ton of time and money trying to beat the legal system or were so arrogant that would not consider working with DISASTER MASTERS to market their services can call 1 800 THE PLAN or ask via email.
You can find the Disaster Masters trademark registration at the USPTO below.
If you know of any individual, company or organization that is using the DISASTER MASTER trademark without our written permission we want to know.