BrandBucket.org

[rubencouto]

Hello!

A guy in europe is setting up a sort of BrandBucket clone/copy: BrandBucket.org.

It seems that he has filed for "Brand Bucket" trademark: http://www.trademarkia.com/brandbucket-87250042.html

What are your thoughts on this?

Is he infringing any trademark law?
is he violating any copyright laws?
Is he "only" cybersquatting?
Is this illegal?
Could any domain sellers be penalized for publishing their names at BrandBucket.org?

Thanks for any feedback!
Ruben

 

[Johnywang]

Guess it will serve as lesson to others. Who else is remaining?

 

[gina ferrano]

It appears it now forwards to www.brandbucket.shop...
surprised that Margot didn't trademark .com name?
now some disgruntled person is acting like a fool.

 

[Leopard]

Only way forward and lesson to learn here is to trademark your name. With 600-700 + extensions you cant control someone registering your name in another extension.

 

[Altoz]

I am just jumping in for sec. as I checked the issue today
It's now brandbucket.shop as (gina said as well), but what's cute that brandbucket.shop TM the name "brandbucket" in USA and Norway

Next is the issue with ALL the hundreds "nice" extensions. I feel it's almost impossible to get protected. Who will stop i.e.: namepros.club etc How would NP feel?
Creation of ALL the new crap is creating HUGE complication and CONFUSIONS. Another reason I am so allergic.

 

[JimJammy]

http://www.wipo.int/amc/en/domains/...il&utm_term=0_bcb3de19b4-958311d72d-256597105

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boxador, Inc. v. Ruben Botn-Joergensen

7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <brandbucket.org> and <brandbucket.shop>, be transferred to the Complainant.

Credit to @TauseefKhan for bringing this to our attention.

 

[canswift]

It appears it now forwards to www.brandbucket.shop...
surprised that Margot didn't trademark .com name?
now some disgruntled person is acting like a fool.

Brandbucket DID trademark their name. Unfortunately due to what looks like error or oversight, the renewal paperwork was not filed and the TM got cancelled in June 2016. Brandbucket re-applied for the TM in January 2017 but Mr. Brandbucket.shop / .org had beaten them to it and applied for a TM on "brandbucket" in November 2016. He got it and it's registered as a TM in both the US and Norway. So this isn't quite the clear cybersquatting debate it might seem...

 

[Steven McEvoy]

I wonder how things are going with this?

 

[siravi]

Thanks for giving us brand awareness

 

[jberryhill]

So this isn't quite the clear cybersquatting debate it might seem...

It's quite clear.

I realize the fixation on trademark registration among domainers may make it less clear, since domainers do not generally understand that "having a trademark" and "having a trademark registration" are not co-extensive concepts.

Be that as it may, there is nothing unclear about what the Respondent in the proceeding was up to.

 

[equity78]

It's quite clear.

I realize the fixation on trademark registration among domainers may make it less clear, since domainers do not generally understand that "having a trademark" and "having a trademark registration" are not co-extensive concepts.

Be that as it may, there is nothing unclear about what the Respondent in the proceeding was up to.

John could you go into it a little "having a trademark" vs "having a trademark registration"

 

[Keith DeBoer]

I think he (@jberryhill) means common law vs registered but either way I would love to hear further explanation from an expert in this area.

 

[Steven McEvoy]

I’m curious if Brandbucket.com is even trying to do anything still? Or if they have any options

 

[Keith DeBoer]

There are options and an expert in intellectual property law could elucidate them if he/she wanted to.

I will say that it appears from the public records at Trademarkia.com that the rights to the registered mark are currently being contested.

Most people don't know that a trademark must be properly applied for, utilized and protected. Especially during the first five years of ownership during which time it can be challenged and removed, depending on the circumstances.

As with all things legal this process can take months or even years

 

[WingMan]

Easy fix, make an offer for BrandBucket.shop/.org

 

[jberryhill]

John could you go into it a little "having a trademark" vs "having a trademark registration"

I've done this a bunch of times here on NP, but I'm going to ask you three questions just to warm up the brain cells before diving into trademarks.

Let's say you live in a city which has the following law:

"If you want the privilege of walking your dog in the park, then you must have a dog license. In order to obtain a dog license, you must pay a fee of $5 to the town clerk. Dog licenses will need to be renewed every year."

Okay, so, here's the first question:

1. I go to the town clerk, pay the $5, and get the license. Does that mean I have a dog? (yes/no)

Here's the second question:

2. I buy a dog, go to the town clerk, pay $5 and get the license. A year goes by, and the license expires. Does that mean I no longer have a dog? (yes/no)

Here's the third question:

3. I buy a dog, pay the $5, and get the license. Six months later my dog dies, but the license is still valid. Does that mean I still have a dog? (yes/no)

Now, there are some important differences among various countries as to "what does a trademark registration mean?" in terms of what, specifically, it signifies, what rights it confers, and so on. But I get really tired of writing up the difference between "having a dog" and "having a dog license" every couple of months or so here on Namepros, so maybe some helpful person will dig up the link to the last time I went through this. But the bottom line is that it is possible to have a dog, and no dog license; to have a dog license and no dog; or to have both a dog and a dog license.

But, especially in the US, whether or not you "have a trademark" and whether or not you "have a trademark registration" are two different questions.

If you can answer the three questions above correctly, then you are all warmed up and ready to understand the difference between "having a trademark" and "having a trademark registration".

 

[WingMan]

@jberryhill Can you have a trademark without a trademark registration?

 

[Hypersot]

@jberryhill Can you have a trademark without a trademark registration?

Can you have a dog without a permit to walking him in the park?

 

[jberryhill]

@jberryhill Can you have a trademark without a trademark registration?

Yes, in fact, in the United States, you are required to have a trademark BEFORE you have a trademark registration. In the US, you register your trademark in order to obtain a variety of procedural advantages in litigation. You can file an application on the basis of an intent-to-use, but if the application is granted, then that application will not proceed to registration unless and until you submit proof of use of the mark.

This is like asking if you can own a car without a vehicle registration. Yeah, sure you can. You register your car in order to obtain certain privileges - like being allowed to drive it on public roads. But if I want to buy a car in order to display it in my car collection, or drive it around on my private property, I don't have to register it. You see those guys driving around the NASCAR track? Do they own cars? Yup. Are those cars registered to drive on public roads? Nope. Notice that none of them have license plates.

 

[jberryhill]

Can you have a dog without a permit to walking him in the park?

Precisely. If you don't want to walk your dog in the park, you don't have any reason to want to register your dog.

In the US, you "get" a trademark by using a distinctive mark on your goods/services. If you want to enforce that mark, you will have to prove in court that you've been using it, it is valid and distinctive, that you own it, that it is enforceable in the jurisdiction where you are suing, and a few other things. The burden will be on you to prove those things in order to enforce your mark.

If you have a trademark, and you then REGISTER your trademark, then you (a) automatically have the right to sue on that mark in federal court instead of state court, (b) you walk in with the presumption that it is valid and distinctive, and that you own it, (c) your right to enforce automatically extends to the entire US and is not geographically limited to your trading area, and a raft of other enhanced rights. In other words, registration shifts the burden of proof on those things to the alleged infringer. Instead of having to prove you DO have a valid trademark in the case of an unregistered mark, your registration says you have one, and the other guy has to prove you DON'T.

But registration of your mark in the US does not "get you a trademark". It confers certain enhanced procedural and legal rights in the mark you already had.

A similar situation is true with copyrights. If you write a work of orginal authorship, paint a painting, compose and record a song, etc., you HAVE a copyright in your work. Automatically. That will give you the right to stop others from copying. If you want to sue for monetary damages in federal court, you will have to register your copyright. But registration is not what gets you a copyright. Registration merely provides you with certain conveniences and shifts the burden of proof as to whether you own one.

 

[jberryhill]

 

[WingMan]

@jberryhill That was educative. Thanks