Dear Ms. Hunt,

With regard to your notice concerning trademark CITY:

There is not a chance of a trademark infringement in this case. First, you did not provide us with any evidence of the CITY trademark registration in Russia. Trademarks are protected in Russia on the basis of their registration. Unregistered marks are protected only if they are well-known trademarks. You did not submit any evidence that CITY is a well-known trademark. You only mentioned that your trademark is registered on the territory of the United States, the European Union and "throughout the world" while you did not clarify what the world means. Nevertheless, to have your trademark protected in Russia it is not necessary to hold trademark rights "throughout the world", the mark just has to be registered in Russia.

Furthermore, trademark infringement occurs only if someone uses a sign that is identical or confusingly similar to a trademark of another party. This principle equally applies in Russia, the EU and the United States. There is no confusing similarity in this case. Fontcity.ru is used in a descriptive way to indicate the activity of the foundry and the names of particular fonts that include the word city cannot be confused with the fonts of Berthold. The word city is used in respect of certain fonts' names such as CIITY OF SAMARA, CITY OF MOSKVA, CITY OF KHABAROVSK, etc. This usage is also quite reasonable since SAMARA, MOSKVA, KHABAROVSK are the cities in the Russian Federation. The fonts that are offered on the Fontcity.ru are performed in an original graphical manner and the whole line of typeface fonts has its own unique style. Consequently, there cannot be any confusion between the fonts of fontcity.ru and the ones of your company.

Your claim in respect of the domain name www.fontcity.ru has no basis as well. The owners of fontcity.ru are providing bona fide services through this web site; the word city is used in an illustrative and descriptive way. Fontcity is a "city of fonts"; a place where all interested persons may find some information concerning fonts. The owner of the domain name has rights and legitimate interests in fontcity.ru. It is fairly logical to adapt this kind of designation for people who professionally create and distribute type fonts.

You also named dilution of Berthold's rights as an alleged violation of your company's rights however under the United States law only the owner of a famous mark is entitled to this form of protection if another person's use of a mark begins after the mark has become famous and this use causes dilution of the distinctive quality of the mark. Again you did not put forward any evidence that CITY is a famous mark. In fact, the word that is in common usage in any language can hardly be a famous mark. City is a word that is widely used in the English language and has various meanings. Therefore, you should present compelling evidence that your mark has acquired popularity and is considered famous. Again, no such evidence has been presented.

You stated that this kind of use is creating confusion on the market. Again no evidence of confusion has been put forward except the assertion that web searches reveal certain search results. For confusion to take place it is not enough to provide the results of a web search. No evidence has been given that consumers are likely to confuse fonts designed by fontcity.ru and the ones offered by your company. Moreover, the web search results of the word city reveal not only the fonts designed and distributed by fontcity.ru but also by third parties.

We must disagree with your arguments. There is no infringement in this case. The word city is used only in a descriptive way and it does not have a dominant position in the names of type fonts. All the fonts available on fontcity.ru have their own style and cannot be confused with the fonts of Berthold. The use of the word city in an honest way does not give rise to confusion. In fact, CITY per se is not a particularly distinctive mark. This word is in common usage in the English language and to prove trademark violation in such a case one has to demonstrate that the mark has acquired secondary meaning. No evidence of this kind has been presented. In short, your complaint contains just plain allegations without any proof of trademark infringement and dilution.

Respectfully,

Intellectual Property Attorney