Atlanta-based Travel Spike has issued a cease and desist letter to New York-headquartered Travel Ad Network (TAN), alleging trademark infringement.
Travel Spike runs a much smaller, but competing advertising service called Travel Ad Network and the U.S. Patent and Trademark Office issued Travel Spike the trademark [registration number 3,912,781] for Travel Ad Network on Feb. 1, 2011.
Travel Spike alleges that TAN is using Travel Spike’s intellectual property, including its federally registered trademark, causing confusion among Travel Spike’s travel and tourism customers.
Travel Spike alleges that TAN, which has raised $31 million in venture capital funding and acquired TravelMuse in 2010,  could be subject to substantial monetary damages, which could be trebled if a lawsuit were filed and a court finds that TAN willfully abused Travel Spike’s intellectual property.
The basis of Travel Spike’s argument is that it first used the name Travel Ad Network in early 2002, well before TAN’s claimed first use of October 2003 and TAN’s website launch around September 2004.
Neither side is disputing that Travel Spike was granted the Travel Ad Network trademark earlier this year.
Brian Silver, the president and CEO of TAN, says Travel Spike “has their view of the facts and we have ours.”
Silver calls into question Travel Spike’s motives, saying its timing is curious.
“It seems odd they’ve known of us using Travel Ad Network since 2004 and they are first complaining about this now,” Silver says.
He declined to elaborate, saying TAN declines to fight over the issue in the media.
Howard Koval, chief strategic officer at Travel Spike, says the situation has caused a “tremendous amount of confusion” in the marketplace.
“They’ve been a thorn in our side,” Koval says.
Koval concedes that TAN is a much larger business than Travel Spike’s Travel Ad Network, which has chosen to grow “organically.”
Koval says Travel Spike gets about 70% of its revenue from its Travel Ad Network business, which has at various times counted most major U.S. airlines, foreign airlines such as Air France, Lufthansa, Iberia and Cathay Pacific, tourism boards from 15 states and Japan, Morocco and New Zealand, as clients.
The two sides recently met to discuss the issue in the Manhattan office of Travel Spike’s attorney and Koval says “all is on the table for discussion,” including which party uses the Travel Ad Network name going forward.
Travel Spike has taken the issue public, issuing a press release, as a lever.
Said Travel Spike CEO and founder Ryan Bifulco in the statement: “We are prepared to protect our intellectual property and took a legal position because we cannot allow TAN to continue to build a competitive business and raise capital based on our intellectual property.”
The public dispute undoubtedly is an embarassment to TAN and its venture capital backers.
The issue seems headed toward litigation or a settlement.
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Seems to me travel ad network is too generic to have gotten a TM designation. The application by Travel Spike was probably submitted 5 yrs ago. If after 5 yrs there are no objections to an application it is considered granted.
Kristin – Thanks for your comment. The process for trademark registration is long and the requirements are stringent, but the USPTO awarded the mark to Travel Spike based on initial and continuous use. In fact, while TAN did not dispute the USPTO’s decision, TAN had actually tried to register the mark for themselves in 2007 and 2009, but were denied both times by the USPTO and then abandoned the process.
As an FYI, the original press release can be accessed on our site at http://www.travelspike.com
Happy to address additional questions from you or other Tnooz readers.
Howard
Executive Vice President, Chief Strategist
Travel Spike, LLC
The timing does seem curious. Mr. Koval, why did Travel Spike wait seven years before sending “cease and desist” letters to TAN and its publishers?
Mr. Imboden,
We did not wait seven years to take action against TAN, nor is the timing that curious. TAN knows this. After going through the process with the US Patent and Trade Office (USPTO) for several years, Travel Spike was awarded the trademark in early 2011. Prior to that, we had several interactions with TAN but they continued to use our mark – even after the USPTO denied their attempt to register it in 2007 and 2009. We are simply protecting our property and took legal action because it seems to be the only way to right a wrong by a competitor who should know better.