Help me with trademark issue

[mylsel]

Hi,

I want to do fully managed hosting business in the Europe so decided to purchase fullymanaged.co.uk or fullymanaged.eu (example domains) but with a quick search i found that fullymanaged.com is already exists and shows "R" and "TM" next to their domain or company name in their website. They are doing business from Canada and the USPTO doesn't show that fullymanaged as a registered trademark. FullyManaged seems to me a generic name. The whole web hosting world use these two words often. Can I go ahead or is it a trademark infringement?.

Mylsel

 

[Grego85]

yup, looks like you are in the clear this one.

The only TM on Fully Managed is some sort of communications company not involved at all with website hosting.

 

[mylsel]

Thanks for the clarification

 

[jberryhill]

They are doing business from Canada and the USPTO...

This kind of thing frequently makes me wonder if people understand what the "US" stands for in USPTO.

Canada has a perfectly fine trademark registration office which - and this may surprise you - is primarily used by Canadians. Contrary to belief popular in some places, the US does not actually run the world.

You want to do business in Europe, so you are checking the US trademark register, to find out whether a Canadian company might have a registered trademark in the US. This is why, when I want breakfast for dinner, I go to the clothing boutique to see if they have any hammers on sale.

The Canadian registration application for "fullymanaged" can be seen here:

https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/viewTrademark?id=1770752&lang=eng&tab=reg

Application number
1770752
Registration number
Not registered
Filed
2016-03-03
Name
fullymanaged
Type
Word Mark

This application has seen some action, and it is summarized here:

Filed 2016-03-03

Search Recorded 2016-08-24

Examiner's First Report 2016-08-24 Response due: 2017-02-24

Default Notice Sent 2017-03-14 Response due: 2017-05-14

So, it would appear that CIPO issued an action in August 2016, with a response due in February. The applicant did not respond in February, and so CIPO sent a notice of default in March with a response due on 14 May 2017 - a month from now.

Now, one wonders what reason that CIPO might possibly have had for issuing an action on the term "fully managed" for fully managed hosting services...

 

[jberryhill]

....and I can think of two reasons why TM applications are frequently refused.

But, while chewing on that, I'm puzzled by Greg's comment:

The only TM on Fully Managed is some sort of communications company not involved at all with website hosting.

Are you suggesting this has nothing to do "at all with website hosting":

https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/viewTrademark?id=1465439&lang=eng&tab=reg

Registration number
TMA788789
CIPO status
REGISTERED
Filed
2010-01-12
Registered
2011-01-26
Registrant
Fully Managed Technology Inc.

Services:
(1) Business management consultation and support relating to the use of information technology; consulting services to business and organizations related to the support and organizational planning of information technology systems; collecting and storing electronic data information, namely text, numbers, images and video and audio sequences; installation and maintenance of equipment used in information technology systems; electronic data information services, namely, distributing electronic data, information, namely, text, numbers, images and video and audio sequences and the transmission and communication of electronic data information stored on databases, drives and servers or transmitted through interactive computer systems; training in the use and operation of information technology equipment and systems; technical consultancy services and support in the field of information technology; management of information technology systems for others; development of information technology systems for others; technical monitoring and support of information technology equipment and systems for others; computer hardware and software consulting services, namely, services for providing servers and storage of data; creating and maintaining websites; hosting of websites for others; selling of computer hardware and software.

I'm curious to know how you get "not involved at all with website hosting" out of "hosting of websites for others" in that trademark registration, by a company clearly engaged in website hosting. Walk me through the thought process there.

 

[Grego85]

....and I can think of two reasons why TM applications are frequently refused.

But, while chewing on that, I'm puzzled by Greg's comment:



Are you suggesting this has nothing to do "at all with website hosting":

https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/viewTrademark?id=1465439&lang=eng&tab=reg

Registration number
TMA788789
CIPO status
REGISTERED
Filed
2010-01-12
Registered
2011-01-26
Registrant
Fully Managed Technology Inc.

Services:
(1) Business management consultation and support relating to the use of information technology; consulting services to business and organizations related to the support and organizational planning of information technology systems; collecting and storing electronic data information, namely text, numbers, images and video and audio sequences; installation and maintenance of equipment used in information technology systems; electronic data information services, namely, distributing electronic data, information, namely, text, numbers, images and video and audio sequences and the transmission and communication of electronic data information stored on databases, drives and servers or transmitted through interactive computer systems; training in the use and operation of information technology equipment and systems; technical consultancy services and support in the field of information technology; management of information technology systems for others; development of information technology systems for others; technical monitoring and support of information technology equipment and systems for others; computer hardware and software consulting services, namely, services for providing servers and storage of data; creating and maintaining websites; hosting of websites for others; selling of computer hardware and software.

I'm curious to know how you get "not involved at all with website hosting" out of "hosting of websites for others" in that trademark registration, by a company clearly engaged in website hosting. Walk me through the thought process there.

I'm not really going to walk you through the thought process because as I understand now, I didn't do much thinking. I read the TM description but not very thoroughly, and I figured the trademark was unrelated to web hosting.

From this I have learned to read more thoroughly, and to not offer an opinion on trademark issues here. Thankfully you were here to set this right..

 

[jberryhill]

Live and learn. If you're not learning, you're not living.

 

[Enac Domains]

Live and learn. If you're not learning, you're not living.

Hmm...i thought it was "Live and let die..."