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question How does EU trademark affect US?



Top Member
John Berryhill, Ph.d., Esq.

Well, for a couple of reasons.

The main reason would be that persons might be less likely to want to buy the domain name from me if they see there is a registered trademark for the same term, depending on what the term is.

I would want to know what type of mark it is:

Is it a descriptive mark?
A suggestive mark?
An arbitrary mark?
A fanciful mark?
Is it otherwise a surname or a geographic term perhaps?

Another thing I would want to know is:

How long did the company have a trademark, or how long might they claim to have had a trademark, before they took the further step of registering the trademark?

Another extremely important thing I would want to know is:

What has the domain name been doing during the time I have registered it?

So, let's take one combination of those factors from your thoroughly under-determined question that might have all kinds of answers, and say it was a fanciful mark which they were using in the UK and abroad for five years before seeking to register the mark in Europe. Let's also assume that I registered the domain name last year and it resolves to nothing.

In those circumstances, it would be extremely difficult to explain why I registered a fanciful term that someone was using as a trademark for four years before I registered it, particularly since I have no actual use of the domain name which might help explain that. I would likely lose a UDRP.

Let's take another combination of those factors from your thoroughly under-determined question and say that it is an arbitrary mark which they just starting using last week, and I have had the domain name resolving to a PPC page consistent with the dictionary meaning of the word.

In those circumstances, it would be very simple to argue that (a) I have legitimate rights in the use of a dictionary meaning for purposes consistent with that meaning and (b) I could not have registered the domain name in bad faith relative to a trademark that did not exist at the time.

I would still be sad, though, since the potential market for my domain name has been reduced by the fact that buyers may be deterred by the existence of the trademark.