I recently Registered "Rapid Refund Taxes".com~Quite Generic I believe.

[DnPresident]

We recently Registered "Rapid Refund Taxes".com~Quite Generic?

Well we just got an email from a tax firm stating that they own a similar trademark and I'm cybersquatting them and to turn the name over immediately.

Here's what we believe and sent back via email.....

Rapid refund is an Generic term for filing taxes. It is the same as you saying you have a trademark on Fast Refunds, Quick Refunds or Speedy Refunds..You can not or even attempt to control or monopolize a generic term such as rapid, fast or speedy followed by any generic term such as cars, taxes, delivery, cleaning..

You may get a trademark on the word "Rapid" or any other generic name but this does not mean you can run a monopoly on the internet and threaten everyone using a generic word such as Rapid, Fast or Speedy folowed by another generic term such as Refund, Refunds, Refunded, tax, taxed, taxes,

You may however trademark and actually control a brand name such as YourCompanyREFUND YourCompanyRefunds and so on..

We do not and will never CyberSquat as you suggest and take all and every such threat, charge and or accusation very seriously. We do not and will never transfer ownership of our domain names without an agreed upon sale price between "us the owner" and an interested purchaser.

Dave Crutcher

 

[.X.]

"Rapid Refund" is a quite well known service offered by H&R Block. What this service amounts to is essentially a loan against your prospective tax refund, and they make more money off of this sucker than they do in preparing tax returns.

It is not "generic" since, as you demonstrate, other phrases could suffice to describe a prompt tax refund.

It's really not descriptive either, since they do not really purport to obtain your tax refund any more rapidly than the government will process your return - it is really a loan service which, while rapid, is not really a refund. In that sense, it might be considered deceptively misdescriptive, but their federal registration is prima facie evidence of the ownership and distinctiveness of the mark.

I would read the above, and take JB's advice, He gave it to you free. Make good use of it, Imo

 

[DnPresident]

Neither is ridiculous actually... they are the names of their services and products. It would NOT be fair for others to be able to use their product/service names for the same products without repercussions. TM's and patents are there to protect peoples names and works from copy and benefit from their work.

I deal in domain names but I don't trademark the name "Domain Names"......it's about as general as tax cuts.

 

[DNQuest.com]

I deal in domain names but I don't trademark the name "Domain Names"......it's about as general as tax cuts.

So you are saying there are no TMs wth "Domains" in it??

I went to reply yesterday, but decided not to because it would have been deemed real harsh. The facts are, Rapid Refund is a registered mark, and you had a lawyer tell you it is a registered mark. Adding the taxes is directly in H&R field. They have been using that for 20+ years. Yeah it sounds good becuase of all the money they dumped into promoting their service.

But honestly, you have ever heard someone say, "I want my refund rapidly"? And actually, you should have registered "refund rapidly taxes" according to your logic.

In any case, you have been given some good free advise, what you do with it is up to you.

I look forward to your response rapidly...


Rich,

A- Not really, they have a registered mark for Rapid Refund in the field of taxes, so it has not been deemed descriptive.

b- Yes, in the descriptive sense. But that hasve been talked about to death around here (in reference to Apple).

 

[jberryhill]

I've always thought Rapid refund was just something you did when you wanted your taxes back quicker than the standard processing period,Not a special trademarked variation of illegal to use words.

Except, as noted a couple of times so far there is no such thing. There is no way to "expedite" your tax refund. You get it when the government processes your tax return. You can designate an electronic payment agent, or you can participate in a loan program.

And, no, I didn't look up anything in the trademark database. As also noted above H&R Block has done saturation advertising for years relating to this service which, again, is a loan service. Other tax services manage to offer tax refund loans (which, IMHO, are typically pretty sleazy usurious loans) without using the term "rapid refund".

There are lots of terms which, even though suggestive of the goods or services, have become well known marks through longstanding use and promotion.

Handi-Wipes - Are they handy? Are they wipes? Yes. But they've been around for decades, and everyone knows what they are.

American Airlines - Are they in America? Do they run an airline? You bet.

It's not always as simple as "does someone have a trademark" since things like CHEER detergent involve a word that is commonly used for other things. IMHO - and that's just my IMHO, so take it for what it's worth - this situation is not that.

The observation that "others are doing it" is absolutely worthless in this context. I see a lot of c&d traffic, and I can assure you that H&R Block has been on a c&d binge for several months, and has sent out hundreds, if not thousands, of letters to domain registrants.

And, having seen a lot of these letters, I might as well make an observation about their TaxCut brand tax preparation software. A "tax cut", in its ordinary meaning, is not something you do, but is something the government does. In association with tax preparation software, "TAXCUT" is similarly not descriptive. If a "tax cut" formative domain name were being used in connection with, say, information about government tax policy or taxation proposals, that would be one thing. But if the domain name is being used to advertise tax preparation software, then the association between "taxcut" and H&R Block's software is, again, longstanding and well established.

I can go to Canal Street in New York and find dozens of folks selling fake Rolex watches. That observation doesn't make any particular one of them a legitimate vendor.

 

[Prof. Goldbloom]

He He...you might want to try something. Go into the yellow pages, and call all the lawyers. See if any one of them will talk with you for a few minutes ad give you free advice. I'm sure that some will, but not many.

Now look (in your YP book) for the lawyers that have established themselves as THE top in their industry...or even close to the top. Ask THOSE attorneys for a little free time. I'm thinking you won't get any more time than it takes for them to hang up...IF you get past their secretaries.

Now look at your current situation. You brought up a subject here, and I can only assume that you're wanting some input. Aside from all the 'opinions' you got, you've received the advice of a prominent attorney in this industry. I'd call that the peanut butter and jelly of free advice. I'd at least consider it worth listening to.

 

[tricolorro]

"Rapid Refund" is a quite well known service offered by H&R Block...

Yes, but not a service they are likely to want to use again.

At least not under that term.

I think they've had their belly full of that mark.

I don't remember when it first began but over 5 or so years ago they were being sued and investigated by the SEC and Attorney Generals of different states for the "false advertising" of a refund which was really a high-interest loan as you point out in your post in this thread .

This is a nice summary of what was going on back in 1998:

April 12, 1998
"SPENDING IT; Tax Giant's Loan Deals Stir Dispute"

"Indeed, H & R Block is on the receiving end of at least six suits now active in Federal and state courts nationwide. The suits typically accuse Block of using deceptive ads and unfair trade practices that blur the distinction between ordinary electronic filings and those that include refund anticipation loans, or R.A.L.'s."
----

Look at this headline regarding the "Rapid Refund".

February 08,2001
"Block Is Ordered to Stop Advertising 'Rapid Refunds' of Taxes"

"A federal judge has ordered H&R Block, the nation's largest income-tax preparation company, to stop using the phrase ''rapid refund''

So H&R stopped using "Rapid Refund" and started using "Refund Anticipation Loan".
-------

Then H&R was being sued for false advertising and deceptive practices for misleading their customers with their these high-interest loans.

And the lawsuits and investigations continued:

March 31, 2002
" H&R Block Is Sued by (New York) City Over Loan Ads"
-----
November 20, 2002
" H&R Block Settles Class-Action Suit Over Loans"
-------

December 13, 2003
"COMPANY NEWS; H&R BLOCK SAYS S.E.C. IS INVESTIGATING REFUND LOANS"
---------
April 1, 2004
"Judge Says Racketeering Suit Can Proceed Against Block..."

All Headlines from this source:
http://snurl.com/rapidrefund
-----

Interestingly, the H&R Block TM reg for Rapid Refund seem to be a
design TM not for the words Rapid Refund itself.

A TM for Rapid Refund appears in the USPTO database for this past
August 21, 2007.

It's for: "Electronic transmission of income tax return information and income tax information.'

And claims first use in Commerce on 01/24/1986.

The applicant is: HRB INNOVATIONS, INC

Could that be H&R Block?

As it stands now all the major extensions for Rapid Refund are registered.

Only the .COM is regged to H&R Block.

RapidRefund.net is a live site and regged since Jan 01,2004.

Will H&RBlock or someone else want to defend the "tainted" Rapid Refund mark?

Who knows?

Patrick

 

[comicbookguy]

HR Block changes it to, Instant Money Refund Anticipation Loan (IRAL). (or RAC and RAL) They still say Rapid Refunds on the commercials but If you go there they now call it a IRAL. I will assume maybe thats why they dont go after anyone on the name.

http://www.hrblock.com/taxes/products/office/fast_money_options.html?srchterm=rapid refund&srchnum=1

Jackson Hewwitt calls theres a Money Now Loan ( MNL)

 

[labrocca]

Except, as noted a couple of times so far there is no such thing. There is no way to "expedite" your tax refund. You get it when the government processes your tax return. You can designate an electronic payment agent, or you can participate in a loan program.

And, no, I didn't look up anything in the trademark database. As also noted above H&R Block has done saturation advertising for years relating to this service which, again, is a loan service. Other tax services manage to offer tax refund loans (which, IMHO, are typically pretty sleazy usurious loans) without using the term "rapid refund".

There are lots of terms which, even though suggestive of the goods or services, have become well known marks through longstanding use and promotion.

Handi-Wipes - Are they handy? Are they wipes? Yes. But they've been around for decades, and everyone knows what they are.

American Airlines - Are they in America? Do they run an airline? You bet.

It's not always as simple as "does someone have a trademark" since things like CHEER detergent involve a word that is commonly used for other things. IMHO - and that's just my IMHO, so take it for what it's worth - this situation is not that.

The observation that "others are doing it" is absolutely worthless in this context. I see a lot of c&d traffic, and I can assure you that H&R Block has been on a c&d binge for several months, and has sent out hundreds, if not thousands, of letters to domain registrants.

And, having seen a lot of these letters, I might as well make an observation about their TaxCut brand tax preparation software. A "tax cut", in its ordinary meaning, is not something you do, but is something the government does. In association with tax preparation software, "TAXCUT" is similarly not descriptive. If a "tax cut" formative domain name were being used in connection with, say, information about government tax policy or taxation proposals, that would be one thing. But if the domain name is being used to advertise tax preparation software, then the association between "taxcut" and H&R Block's software is, again, longstanding and well established.

I can go to Canal Street in New York and find dozens of folks selling fake Rolex watches. That observation doesn't make any particular one of them a legitimate vendor.

And imho this is EXACTLY how your usage can be your claim to use the domain. While HR has a TM for the rapid loan service. You can certainly use the domain for information (imho) on how to obtain a rapid tax refund. Usage is everything and imho I don't see how your using it for information for the many tax options available is against the TM of HR which for them is a loan service.

IC 038. US 100 101 104. G & S: Electronic transmission of income tax return information and income tax information. FIRST USE: 19860124. FIRST USE IN COMMERCE: 19860124

Seems rather simple to steer clear of that scope. Maybe I am wrong though and Mr. Berryhill will tear me a new one.

 

[jberryhill]

you've received the advice of a prominent attorney in this industry.

Don't get too carried away there.... I put my pants on one leg at a time just like anybody else.

As pointed out above, there may be more to this, and while I have made some off-the-cuff observations here, I could very well be dead wrong here.

Interestingly, while HRB has at least one registration for a logo which includes "H&R Block" in it, their application for a text-only registration for "rapid refund" currently stands refused as descriptive. As noted in the action on that application, they can counter with evidence of acquired distinctiveness through longstanding substantially exclusive use. It will be interesting to see if they claim a particular date upon which they have obtained distinctiveness, in their response to that refusal.

But, as these things are driven at bottom by consumer perception, I'm at least familiar with the claimed mark, and associate it with HRB. Hardly a scientific sample, though.

A TM for Rapid Refund appears in the USPTO database for this past
August 21, 2007.

That's a pending application, not a registered TM.

One thing I really want to point out though. As a general principle, I don't comment on threads in which I would have any intention of counseling the OP or taking a case.

I do suspect that the OP would get a different take on this particular issue from Stevan Lieberman www.aplegal.com , as he had mentioned the HRB c&d letter campaign in a recent discussion we had.

 

[labrocca]

I could very well be dead wrong here.

:o :tri:

It can't be true!


On a serious note; it's a very interesting thread and HRB seems to be trying to muscle their way into a TM.

 

[jberryhill]

It can't be true!

Yeah, well, don't let my wife find out. I'll never hear the end of it.

 

[DnPresident]

their application for a text-only registration for "rapid refund" currently stands refused as descriptive.

Are you saying they were refused the trademark for the words Rapid Refund?

As it stands now all the major extensions for Rapid Refund are registered.
Only the .COM is regged to H&R Block.
RapidRefund.net is a live site and regged since Jan 01,2004.
Will H&RBlock or someone else want to defend the "tainted" Rapid Refund mark?
Who knows?
Patrick

tricolorro....Thanks for an investigative, informative and time consuming response. I tried to add rep to you for the time consuming answer but it said: "We're glad that you're fond of this member, but please give some rep points to some other members before giving it to tricolorro again"

All though they do hold the domain RapidRefund.com it wasn't just handed to them...........They paid $52,945

Again, Thanks to everyone for their advice and special thanks to jberryhill as your opinions, input and advice are highly respected, very welcomed and highly appreciated by me

Much more responce on this than I had expected.

 

[DNQuest.com]

oops

 

[tricolorro]

tricolorro....Thanks for an investigative, informative and time consuming response.

:hi:

Not so investigative.

As Mr Berryhill pointed out the recent trademark filing for the word mark
"Rapid Refund" has not been approved.

From USPTO.org regarding the "Rapid Refund" application:

"Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made."

I had always assumed that the results that appear in the USPTO Tess
site were approved Trademarks.

So I learned something today- thanks Mr Berryhill.
++++++++++++++++++++++++++++++++++++++++++++++

I tried to add rep to you for the time consuming answer but it said: "We're glad that you're fond of this member, but please give some rep points to some other members before giving it to tricolorro again"

Thanks for the Rep attempt.

I also accept checks, money orders and PayPal deposits.

This morning I saw an ad from an H&R Block competitor- Jackson Hewitt.

The ad was on the side of a city bus here in The Bronx.

The ad was for (drum roll please): Money Now Loan
"service" available from Jackson Hewitt.

There was no trademark symbol and USPTO shows no TM results after doing a TESS search.

Patrick

P.S. TESS = Trademark Electronic Search System

 

[tinner666]

Oh yeah, they also have TAX Cut trademarked which is just as ridiculous.
TAXCUTSERVICESdotCOM is available

 

[Dave_Z]

There was no trademark symbol

Which actually isn't required either, IIRC. But of course, it's beneficial doing so.

 

[DnPresident]

Which actually isn't required either, IIRC. But of course, it's beneficial doing so.

Yeah, Might as well drop it...........From what I understand on the last few posts the judge making the decision has some common sense.

You shouldn't be able to trademark a commonly used term such as "Refund" beginning with or followed by another commonly used term such as fast or rapid.

When your expecting money back from the government on your taxes, what do you call it? I call it a refund....and if you want it back quickly it's called fast, rapid, speedy or similar.. You can not trademark and expect to control a commonly used term such as Rapid Cars, Rapid Anything or Rapid refunds

Not sure how else to put it.....Can't get much clearer.

It's just common sense.

I could get in depth but it's just not worth it since I've expressed my feelings already.

 

[bradocconor]

Oh yeah, they also have TAX Cut trademarked which is just as ridiculous.
TAXCUTSERVICESdotCOM is available

Not naymore thanks

 

[tricolorro]

Originally Posted by tricolorro
There was no trademark symbol

Which actually isn't required either, IIRC. But of course, it's beneficial doing so.

:hi:

Yes, I know.

I just found it unusual that Jackson Hewitt didn't TM that
"Money Now Loan" term.

Normally you see a TM or SM attached to all these big
companies ad slogans.

Patrick

 

[Dave_Z]

Not sure how else to put it.....Can't get much clearer.

What you probably meant to say is one can't have absolute exclusive use for
a trademark? That part, you won't see me disagreeing.

Unfortunately, there are certain parties who believe otherwise and have deep
pockets to enforce that further, even if they're overreaching. Those guys you
just try to avoid, if possible.