The Berthold Exklusiv Collection
The Berthold Type Collection
Telephone +1 (312) 493 2517
Facsimile +1 (866) 743 0501
Berthold Types Limited
47 W. Polk St #100-340 Chicago Il 60605 USA
August 11, 2003
Dear Mr. Shipovsky and Ms. Shipovsky:
We write regarding your use of the trademark CITY to offer and distribute typeface fonts.
As you may know, the H. Berthold foundry first released the CITY typeface in 1930. Since as early as 1982 Berthold Types Limited ("Berthold") and its predecessors-in-interest have marketed digital typefaces under the mark CITY in the United States, Europe and through-out the rest of the world. The CITY typeface, designed by Georg Trump, continues to be one of Berthold's most popular and successful typefaces, and represents an extremely valuable good will.
Berthold owns the exclusive right to the trademark CITY for typeface fonts in jurisdictions throughout the world, including the United States Registration No. 2475360 and European Community Trademark Registration No. 1494657.
Berthold recently discovered that you have established a type foundry called "FontCity" and are offering and distributing typeface fonts using the word "CITY" in the United States, Europe and other jurisdictions. You also use the word "CITY" in the name of your web site www.fontcity.ru. You are offering these "CITY" fonts directly from your web site and through your distribution partner MyFonts.com., Inc.
The use of the mark CITY to offer and distribute typeface fonts is without Berthold's authorization, and is causing confusion in the marketplace. Your continued offering and distribution of typeface fonts using the mark CITY constitutes trademark infringement and dilution of Berthold's rights, and unfair competition with Berthold under U.S. Federal and state law, and various other jurisdictions including Germany.
On June 18, 2003, Berthold filed suit against MyFonts.com, Inc. for trademark infringement including trademark infringement related to your ''CITY" fonts. Accordingly, you are aware or should be aware of Berthold's exclusive rights in the mark CITY. Your use of the mark CITY as part of your foundry name and as names of typeface fonts is creating confusion in the marketplace. In fact, web searches reveal search results tor "city typeface" with Berthold's "CITY" followed by your "CITY" typefaces offered by MyFonts.com, Inc.
We request that you cease all advertising, promotion, distribution, marketing and sale of typeface using the mark CITY or any colorable imitation thereof, including CITY OF SAMARA, CITY OF PLESETSK, CITY OF KHABAROVSK, CITY OF TSARITSYN, CITY OF SUZDAL, CITY OF CHERKIZOVO, CITY OF OSTANKINO, CITY OF MOSKVA and/or FONTCITY.
To comply, you will need to remove the mark CITY from all of your typeface fonts (including those with proposed names), catalogs, world wide web site, and any other advertising or promotional materials (including those of MyFonts.com, Inc. and any other resellers).
Berthold desires to resolve this matter amicably, and is prepared to allow you a reasonable period of time within which to comply. Accordingly, we request that you provide us with written assurances that you will discontinue using the mark CITY or any colorable imitation thereof, including FONTCITY and the "CITY OF" font names, and the date of proposed compliance. With respect to the "CITY OF" names, you should easily be able to correct the names to be SAMARA, PLESETSK, KHABAROVSK, TSARITSYN, SUZDAL, CHERKIZOVO, OSTANKINO, and MOSKVA. In fact, your use of "CITY OF" appears to be used primarily on www.MyFonts.com rather than your own web site. As for the name of your type foundry, we are willing to provide you with a sufficient period of time to correct this (e.g. re-directing your web site to a new web address with explanation).
To avoid escalating this matter, we will need to receive the requested written assurances (e.g. fax a letter to +1 866 743 0501 or +1 202 354 4902) by Monday, August 18, 2003.
Sincerely, Melissa M. Hunt,
Vice President & General Counsel
cc: Mr. William T. McGrath, Esq., Davis Mannix McGrath