General question about trademarks

[Plato]

Hello,
I saw this days on flippa auctions a very nice generic two word .com domain (reg date 2012). Then someone claimed he has the trademark for this domain, which he created 2 years later (2014) and post it as a comment

It is not my domain, so it's better not to mention the domainname.

But this can't be legal... Right?

 

[enlytend]

First of all, if someone was granted a trademark then the 2 word phrase is NOT legally considered "generic" for the goods and services for which it was granted.

A trademark is a phrase (or image like a logo) which uniquely identifies a provider of the registered class(es) of goods and/or services. Trademark applications for generic terms used generically (i.e. Green Widgets for a company that manufactures Green Widgets) get rejected.

Whether the seller is doing anything wrong is complicated and depends on things like how they're using the domain now and how they were using it prior to the tm being granted, who had the first use in commerce, etc. The commenter might be trying to reverse-hijack the domain ... or the seller may have been infringing on the commenter's business. Impossible to say without details and more information (and a background in IP law)

 

[Plato]

Hello and thank you for your answer!

OK, I'll try to give more informations:
The generic (?) domain name was something like: mobile + a device
Is this a generic domain in front of the law?

With this method could every savvy (new) company hijack our domains or at least sabotage our auction / auction price....

 

[enlytend]

You don't understand - it depends largely upon usage. You can't tm Green Widgets to sell Green Widgets - that's generic. You can tm Green Widgets for a brand of shoes (since those are not green widgets).

The trademark office examines the application and accompanying paperwork. If they find it "generic" it cannot uniquely id the provider and they reject it. If they have granted a tm, that means that the way the applicant is using it is NOT generic and uniquely identifies their "brand" for the class(es) of goods and services on their application.

Green Widgets (shoes) and Green Widgets (frozen food) could co-exist and each have a tm on Green Widgets - in the first case for shoes, in the second for food. Neither is infringing upon the other.

If someone has the domain GreenWidgets.whatever and they use it to sell green widgets, they're fine because THAT is generic. If they use it to sell shoes, they're potentially causing confusion with the shoe brand Green Widgets and may be infringing. If they owned a domain containing the tm's phrase AND were using it TO SELL SHOES BEFORE the other tm was established, they MAY be OK (though there may be legal disputes). If they had it parked and ads for shoes started appearing around the time Green Widget brand shoes became popular, not so OK.

People go to law school to understand the confusing details and those "gray areas."

If you're serious about domains you should do some reading on trademarks so you have at least a basic understanding what they are and the potential issues.

Here are a few good reads:
http://cyber.law.harvard.edu/property00/domain/main.html
http://www.bitlaw.com/internet/domain.html
Haven't listened to this but it looks interesting - http://www.domainsherpa.com/do-not-register-trademark-domains/

 

[Plato]

Thanks for your detailed answer and the reads.
Oh yes, I will keep me extensively occupied with tm literature the next weeks (or months...)


A few details more:

Domain
Domainname: "mobile telescopes" (ONLY AS EXAMPLE)
Reg date: May 11, 2008 (example)
Use: Blog with news and articles about (mobile) telescopes with google ads.

TM
Word mark: "mobile telescopes" (ONLY AS EXAMPLE)
Good and services: IC number XXXXXXXX, telescopes
Marking drawing code: (4) STANDARD CHARACTER MARK
Filling date: July 20, 2014 (only as example)
Disclaimer: NO CLAIM HAS MADE TO THE EXCLUSIVE RIGHT TO USE TELESCOPES APART FROM THE MARK AS SHOWN

Now let's say, Jan. 2015 I want to sell the domain and have many watchers and bids. Then suddenly someone claims to have the tm for "mobile telescopes" (with a public comment under the auction listing). Now nearly no one has interest to buy the domain. And a really nice aged domain gets only 1-2 low bids far under market value.



I will start right now with the tm reads...

 

[Plato]

In this case

• The domain reg date is older than the tm.
• The company with the tm never contacted the domain owner until the auction (I wonder why...)

 

[enlytend]

Use: Blog with news and articles about (mobile) telescopes with google ads.

When did the mark holder start their business? (when was their first "use in commerce" of the phrase?)
What was on the domain prior to that? And prior to the tm being registered? (archive.org)
Is Adsense showing ads for the trademark holder's product? Competing products? (have to be really careful of that)

It could be someone trolling the auction.... Reasons why they didn't contact the domain holder earlier ... maybe they did? Or they weren't aware of the domain and the site on it? (Not everybody lives and breathes domains !)

 

[slimjim270]

@Zana -

I am with enlytend on this. USPTO is extremely thorough and stringent on "descriptive" marks.

I am not an attorney, but for my own business I have applied for 5 TM's with the USPTO and 3 were successfully registered. Being "too descriptive" was what killed 2 of my applications.

A "(4) STANDARD CHARACTER MARK" is an application for a word (or series of characters) not a drawing, so covers a wide area of uses and protection for the IC class registered for.

PM me the domain you are discussing and the TM that is in question. If you have the actual "comment" that was posted on Flippa, that would be helpful to review when you PM. I will do a little research and post some thoughts outlining potential concerns (but will not post the specific domain or TM to be respectful).

FYI - I had a situation once where someone emailed me a Cease & Desist notice. Upon researching the infringement in question, I found out the TM application had been "Abandoned" years ago. Upon emailing the individual back with that insight along with a copy of the USPTO data I found, they never responded back. I then sent them a registered letter requesting "on what grounds is your notice based" with a copy of the email they sent to the address provided on the TM application. No response. Many individuals confuse the "application" with the "registration" (acceptance of the application). From your above example, it appears the TM had a "Filing date:" but no mention of a "Registered date". Also, was it a 1A or 1B filing. A 1A is "current use", a 1B is "intent to use". A 1A will require a "date of 1st use" in the filing which can be far in advance of the "Filing date" for the TM. Something to consider.

Another topic to consider... each state in the U.S. has a trade name database (for DBA - Doing Business As). Not to be confused with the Federal Trademark system (through the USPTO). So, let's consider the example of you register a trade name in the state of CA for lawn mowing services under "Green Acres". If someone else registers a trade name in the state WA for lawn mowing services under "Green Acres", they are all set to conduct lawn mowing services in WA... as long as they do not perform lawn mowing services in CA they are all set and not imposing on your CA state trade name. If someone has a Federal Trademark (Service mark) for lawn mowing services using "Green Acres", that's a different can of worms as a USPTO Trademark (or Service mark in this case) is national.

So when looking at naming a business or product, it is good to check for Federal TradeMark overlap along with state trade names (DBA's) for each state you intend to provide services or sell product in.

Sorry to be long winded. Hope it's helpful... (sent me a PM and I'll see what I can find)

-Jim

 

[Plato]

Thanks for the detailed answers.

When did the mark holder start their business?
Spring 2014
What was on the domain prior to that and prior to the tm being registered?
A blog/ website with news & articles about the "telescopes" since the reg date
Is Adsense showing ads for the trademark holder's product, competing products?
No. I've checked the archives again (there where never ads at all- my bad in my prior post)

I can't be sure, if the tm holder contacted the domain owner. If he had, he would post it in his comment too.

I don't know, but if I want to apply for a tm, the first thing I would do is to check everything about the name (included registered domain/s)...

@slimjim270 thanks a lot for you detailed answer! I've send you a pm

 

[slimjim270]

Thanks for the detailed answers.

When did the mark holder start their business?
Spring 2014
What was on the domain prior to that and prior to the tm being registered?
A blog/ website with news & articles about the "telescopes" since the reg date
Is Adsense showing ads for the trademark holder's product, competing products?
No. I've checked the archives again (there where never ads at all- my bad in my prior post)

I can't be sure, if the tm holder contacted the domain owner. If he had, he would post it in his comment too.

I don't know, but if I want to apply for a tm, the first thing I would do is to check everything about the name (included registered domain/s)...

@slimjim270 thanks a lot for you detailed answer! I've send you a pm

@Zana

Confirming I received your PM.

I am traveling this weekend, but will do some research early next week and post my findings.

Regards,

-Jim

 

[enlytend]

Another point on this: If the original owner is using the domain the same way as the mark holder and their registration / use in commerce pre-dated theirs, I believe they have rights to continue doing so. However if someone else purchases it, they are acting AFTER the mark was registered - and after the mark owner made it known that the mark exists. So the purchaser could be found to be infringing, even if they leave up the same content.

The original owner acted in good faith (registered the domain and started the blog prior to when the other party's mark and business existed.) A purchaser would probably not have the same protection - especialy after having been notified of the potential tm issues.

I'm not a lawyer - just my best guess from what I know about these things.

 

[slimjim270]

Thanks for the detailed answers.

When did the mark holder start their business?
Spring 2014
What was on the domain prior to that and prior to the tm being registered?
A blog/ website with news & articles about the "telescopes" since the reg date
Is Adsense showing ads for the trademark holder's product, competing products?
No. I've checked the archives again (there where never ads at all- my bad in my prior post)

I can't be sure, if the tm holder contacted the domain owner. If he had, he would post it in his comment too.

I don't know, but if I want to apply for a tm, the first thing I would do is to check everything about the name (included registered domain/s)...

@slimjim270 thanks a lot for you detailed answer! I've send you a pm

Hi All,

Back from my trip... (and have a couple answers for you)
@Zana - thanks for the PM, I did some research for you this morning.
Warning: This post is a novel and may cause you dizziness and gas. If you stare for more than 4 hours, seek medical attention!

Now onto my research/feedback...
1. Zana asked that I not publish the TM or site mentioned in the PM as the TM applicant is a NamePros member. (a respectful request)
2. The TM was applied under a section 1B (Intent to Use), not a 1A (Current Use) so does not list a "First Use" date in the application.
3. The TM was a product TradeMark (TM) application, not a ServiceMark (SM) application. (a big difference - I will speak more to this topic later in the post).
4. The TM was applied for in early 2014 and received an "office action" 4 months later from an Examining Attorney indicating "A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action." The TM application is clearly descriptive of a common English term. I reviewed the Office Action and in paragraph 4 it clearly states "Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s goods".
5. The applicant has not responded to the Office Action since last summer 2014. They have only 6 months to respond or the application becomes "DEAD" (abandoned).
6. The TM in question is not registered, it has only been applied for. And it has already received an Office Action notice as mentioned above. (my gut - the TM application will die with a "DEAD" status in the near future as using descriptive words in a product TM application is TM suicide - also the application was filed by one of those online TM sites - someone wasted good money on this app - the applicant will only have 6 months to respond to the Office Action - time is almost up)

How did I find my data (so you can research info on your own down the road)?
1) Go to uspto(dot)gov and click on the "Trademarks" tab in the top left corner. Then click on "Basic Word Search" and type in the term. I found the TM in question in 12 seconds and read through it.
2) Also, for the "real dirt" (a complete detail of communications) - while you are on the uspto(dot)gov site, go to the TSDR section and type in the Serial# of the application that you get from your "Basic Word Search". This will provide you the latest Status update (with a Status Date) on new applications. Also, you will find all correspondence about the application in PDF format. This is where I found (and read) the actual Office Action response from the Trademark Examining Attorney to the applicant.

Something to consider...

I would like to mention a nuance about the difference between a TradeMark (TM) and a ServiceMark (SM). This impacts all of us that buy/sell domains. I ran into this recently.
An example... (bear with me)
In the example, I will use "white rocks" to represent physical white rocks and I will use WHITE ROCKS to represent a brand or trademark.
Let's say you studied Geology in college and love the subject. You like it sooooo much that you and your spouse create a blog (service forum) with other Geologist called WHITE ROCKS (better mentioned as "WHITE ROCKS brand of rock discussion forum"). You file a ServiceMark (as you are not selling a physical product) but you are providing a service to other rock enthusiast. You receive a Trademark from USPTO (officially a SM - Servicemark) for your promotion or marketing through your mineral forum (service forum).

Along comes Johnny who paints rocks and wants to sell "white rocks". Johnny applies for a product Trademark called WHITE ROCKS. Johnny is declined his application is descriptive of the physical product he intends to sell.

Someone with a Servicemark (typically for marketing/promotion/forum usage) will sometimes file a Cease and Desist to a domainer. If the domainer creates a 5 page site and includes a forum/comments section on their site about the SM term, they potentially are in violation of the Registered SM. Always consider TM and SM to be two different beast to deal (when domaining) as one is for products and one is for service/marketing. A bit confusing... and a good reason to hire a professional to assist you with your developing protection for your brand. Also, let's not forget our local friendly state requirements for Trade Names, that are filed with each state to conduct business. Each state in the United States manages their own list of DBA's (Doing Business As). Fun... Fun...

And let's not forget to end this post with a formal disclaimer... (come on, you know you like to read them)

Disclaimer: I am not an attorney. Nor were any animals injured during the writing of this post. Though many lawyers are considered to be animals, none were tortured or abused during my research. Nor do I have a vested interest in (or any affiliate marketing relationships with) White Rock Mineral Company of MN, nor with White Rock Nudist Colony of CA. If you are confused by this disclaimer... good! You should be as I (like you) have read way too many insane disclaimers while online and thought I would poke fun at them at the end of this novel. I hope you find this disclaimer nuts, but found the above post helpful.

Regards,

-Jim

 

[enlytend]

Thanks for checking into this and the report . One thing I'd like to add, since we were talking about descriptive and generic terms:

The TM application is clearly descriptive of a common English term. I reviewed the Office Action and in paragraph 4 it clearly states "Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s goods".

If an application is still open and you see an Office Action like this, do NOT assume the application won't eventually go through. Persistence, good lawyers and the ability to produce evidence that the term is uniquely associated with the applicant can get a refusal overturned. I know of an example which was rejected 2-3 times for descriptiveness (once with a generic advisory!) and finally went through (will share by PM if anyone wants to see it.)

The takeaway being that every case is unique .