Canvas.com loses its domain name after district court judge ordered the diversity recruiting startup to cease using the brand due to trademark infringement

It looks like the diversity recruiting platform Canvas.com is going to have to change its brand and domain name after losing the second round of a legal battle with Salt Lake City, Utah-based Instructure.

Late last year, Instructure, which offers a learning management and portfolio platform called Canvas, filed a lawsuit against the recruiting startup alleging that its Canvas brand infringed on its trademark for Canvas. Instructure also accused Canvas.com of cybersquatting by using the domain.

On January 5, the case was brought before U.S. District Court Judge Dale Kimball who later granted a request for a preliminary junction by Instructure, Inc., thereby ordering Canvas to stop using its domain name Canvas.com. The Judge also gave Canvas 15 days (January 20) to cease using the brand, delete all online posts using the Canvas brand, and stop using the canvas.com domain name.

However, Canvas continued to use the brand and Canvas.com domain name after the deadline came, thereby violating the court order. Last week, Judge Dale Kimball threatened to find Canvas in contempt of court for continuing to use the brand. Kimball gave Canvas until February 4 to explain why it hasn’t ceased using the brand

On January 24, a lawyer for Canvas wrote to Instructure Instructure, saying that the company has been “working diligently” to comply with the order and rebrand to a new trademark.

He also added:

“As soon as we know when Canvas can cease use of CANVAS and launch a new brand, we will immediately let you know. At present, however, we do not have a specific date when the rebrand will be implemented, but the hard work that our client has been doing suggests that it will be done as soon as is reasonably practical.”

However, it turned out Canvas was buying itself time to appeal the case as we later learned that Canvas had appealed the District Court ruling to the Tenth Circuit Court of Appeals.

However, today, the Appeals court dealt another blow to the 5-year-old startup after it denied (pdf) Canvas’ request to stay the District Court’s injunction. In its ruling the Appeals Court said:

“Considering all the circumstances we are not persuaded that Canvas Tech has carried its “burden of showing that the circumstances justify an exercise of [our] discretion.” The motion for stay is DENIED.”

With the latest ruling from the Courts of Appeals, Canvas.com now found itself between a rock and hard place. The startup has no other choice to either appeal the case to the Supreme Court or rebrands as quickly as possible.

The problem with rebranding is that the domain change will affect the entire brand, including its email and other IT systems that rely on the Canvas.com domain name.

Founded in 2017 by Adam Gefkovicz and Ben Herman, the San Francisco, California-based Canvas is a diversity recruiting platform that allows companies to hire diverse teams. The platform integrates with Applicant Tracking Systems to help discover, attract, engage, and hire talents.

You can read the entire ruling below.