2x Trademark issues

[thesearcher]

Hi all,

I have two issues both involving trademark violation issues:

1st Issue

our domain is name+surname registered with .com, .net and .co.uk. We own these domains as the company has been operating for at least 6 months and named after one of the partners.

Yesterday we received an email from an Hong Kong registrar saying that they received a request to register the same domain with .cn and .asia extensions, and they want us to contact them asap.

I think we don't have any problems with opposing the go ahead in giving these people authorisation to register our domain.

In your opinion, what reasons can we oppose even though these people are in China? Any idea? BTW, our company is registered in UK and it's operating.


2nd issue

I have registered a domain that is called exactly the same as a toy developed by an American artist. The domain will serve for my company operating in a completely different sector, mainly offline. I searched through all the websites' pages that refer to this toy and the artist's own website and no indication of trademark is given.

I also checked the American and UK Intellectual properties databases and NO result for this name as a registered trademark. Although I know these online searches are not exhaustive, I would assume that this artist has not TMed his toy's name at all. Note that this toy is composed of two names, and the first one is used in combination with other second names...

The only reference I found is at the bottom of the artist website saying that all material unless otherwise stated is copyrighted. All rights reserved.

What do you think? Even if my enterprise operates in a completely different sector, could this guy claim infringment? and on what basis?

Many thanks for your help and opinions.
Will be very helpful and appreciated.

 

[KoLdArKnEsS]

dont stress mate that is a scam email...just ignore it..there are plenty of threads here about it

 

[thesearcher]

Hi, thank you for your reply.

I must re-phrase what I wrote though.

This registrar in Hong Kong contacted us saying that another company requested the registration of our domain in .cn and .asia

Do you still think this is a scam?

The registrar seems legitimate as I visited their website but I could not find references about the company they mention, at least online.

Thanks

 

[Domagon]

It's a scam in the sense those domains are likely not even registered in .cn / .asia yet... or if they are, they will try to sell them to you at way above market price... and/or attempt to sell you other services, like domain name monitoring, etc.

TMs are both geographical and goods / services specific...

You're in the UK, they're in the U.S. ... plus you're offering goods / services that different than what they are offering ... so in short, in my view, go ahead and develop the domain - don't sweat it.

Ron

 

[jberryhill]

This registrar in Hong Kong contacted us saying that another company requested the registration of our domain in .cn and .asia

Do you still think this is a scam?

It's bullshit. Go register a .cn domain name. You can do so immediately. Nobody does some sort of inquiry with anyone else if you want to register a domain name.

Google "chinese domain scam".

It's just a ploy to get you to use their overpriced registrar services. The email comes from either a registrar or a registrar affiliate.

Absent specific facts, your second question is not capable of a meaningful answer.

 

[thesearcher]

domagon and jberryhill, thanks for your invaluable feedback.

jberryhill, I would like to ask you what you mean in your reply by "Absent specific facts, your second question is not capable of a meaningful answer."

Sorry, maybe I miss the meaning of your statement.

Is it because you say there is no problem at all by me using the domain for my business or that I did not include enough info for a "meaningful answer"?

Please clarify as I'm confused.

Many thanks for your next useful answer!

PS
good to know you are a lawyer

 

[Timewarp]

I think you are okay on issue#2 as long as you remain in a completely different sector.

Sometimes things change in the future though, Apple computers was doing fine until they went into the music biz and got sued by Apple Records (the Beatles label).

 

[DNQuest.com]

I am surprised, this has not been tounhed on, is/has the toy ever been for sale in stores? If so, there is a TM. It is a name used in commerce for a product. TMs do not have to be registered to have TM protection. But it seems from your description they may have well have a valid TM. So don;t kid yourself thinking the artist needs to go out of his way to "TM" his product (though a smart artist would file for a registered mark).

As far as using it in a different sectors, there are many factors involved to really touch on them all here. Apple is a computer and a record company... now, if you are trying to use "Barbieboll" in commerce for a new line of steamrollers, you may be able to get away with it. But if you try a new clothing line called Barbiedoll, that could cause some resistence.

For your first quesiton, tell them you would let them register it for xx,xxx.xx payable in cash only

 

[thesearcher]

Guys, thank you again for your feedback.

DNquest, as far as I can gather, the toys are sold online only and believe me the type of business I am going to do has nothing to do with toys of any sort.

However, I see your point. I guess that if I seek TM legal advice, this will cost me a lot and I don't have the money to do this, although I realise that in the future the cost will be much higher.

Maybe I can offer my services to the artist for free :p ...will see how it goes.

Thanks again

 

[Timewarp]

DNQuest is confusing TM with Copyright, a Copyright is granted automatically upon creation of a work, a TM needs to be registered. You can look up US TMs online, not sure about other countries.

Also, contacting the toy maker can hurt your case if it goes to court in the future because it shows you are aware of the other person using the name and by offering compensation (free services) you are kind of admitting the possibility of infringement.

 

[BitcoinDK]

Each country may/can have different TM rules. In some countries it is not necessary to have registered it, the product/brand must just have been used widely known to the public, then you will automaticly have TM, yes a limited TM, where you have to register within certain time has past.

http://www.allbusiness.com/legal/intellectual-property-trademark/1404-1.html
and here
http://www.publishlawyer.com/carousel9.htm

A little quote from the above link:
"What if my domain name is similar to an existing trademark?
This is a complex issue. In general, legitimate use of a domain name may nevertheless be an infringement of an existing trademark. In 2000, domain-name registrars (registration companies) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP), setting forth certain priorities in the event of conflict between domain-name users. In addition, Congress adopted the Anticybersquatting Consumer Protection Act (ACPA). Under the UDRP and ACPA, trademark owners may be able to block the use of an infringing domain name. "

Go directly to the source; USA has a FAQ about TM/Copyright here:
http://www.uspto.gov/main/faq/index.html

If you dont have the money to contact a proffesional to handle this, at least read the information from the officials, instead of "just" listening to us. Non disrespect to people here, I know there are lawyers and others with experience in this, but I always say go directly to the source, first after you have read the source and dont understand it, then ask others.

You can also try here and get free advice:
http://law.freeadvice.com/intellectual_property/trademark_law/trademark_rush.htm

And offcourse you are welcome here too. I hope you all dont misunderstand what Im saying.

Good luck with your issue and best regards,

 

[jberryhill]

jberryhill, I would like to ask you what you mean in your reply by "Absent specific facts, your second question is not capable of a meaningful answer."

Sorry, maybe I miss the meaning of your statement.

Is it because you say there is no problem at all by me using the domain for my business or that I did not include enough info for a "meaningful answer"?

The answer to a question like that is going to depend on specific facts, such as the term in question among other things, in order to arrive at an answer that is meaningful.

 

[DNQuest.com]

DNQuest is confusing TM with Copyright

Oh really? read on please

a Copyright is granted automatically upon creation of a work

Agree

a TM needs to be registered

FAIL!!

I guess I missed some sort of "timewarp" where the exsist of common law TMs have been wiped completely off the face of the earth. Maybe I am in some sort Twilight Zone episode???

Sorry, but TMs do not have to be registered to be afforded protection. There is a difference between a TM and a registered Mark. What you are saying all registered marks are in the USPTO (for US, other countries do have their own version). But unregistered TMs are still TMs if they are used as such. That is the difference between ™ and ®. Anyone can use ™ in trying to associate a trademark, but only those with a registered mark may use ®.

You can look up US TMs online,

FAIL!

You can only look up Registered marks or applications for registered marks online. (I guess if you use Google, you can look to see if possibly that a TM exsists, so technically, if your use of "look up US TMs online" referes using any means at your disposal, then it could be a true statement. But if your usage of "look up US TMs online" means resticted to USPTO.gov, then it is a fail. I wanted to clarify just in case someone wants to say I may be confused )