I'm scared! Possible TM takeover

[CHILLY]

o.k. I have a name (in signature below) that I got in 2006-09-12, a .com. Some company took the .net on 2007-06-21. I recently made a simple forum out of it. It looks like some Russian company took the .net, I don't know how big they are ect..What I want to know is; Is it possible for them to register a TM on that name and then take mine. I am asking this because of this thread:
http://www.namepros.com/legal-issue...main-registration-constitute-first-usage.html
Does my forum with adsense constitute usage in Commerce? the .net company has products ect. Is such a name TM-able? I just started that forum a few days ago....was I the first in commerce use? I always thought, if you reg the name first, it's yours???

thank you...........

 

[Jammer]

Sorry to cause any alarm with my post.I personally wouldn't worry about it.

 

[CHILLY]

that's what i thought.... ....I just like the name for myself, thought I'd check. thanks....

 

[del.icio.us]

o.k. I have a name (in signature below) that I got in 2006-09-12, a .com. Some company took the .net on 2007-06-21. I recently made a simple forum out of it. It looks like some Russian company took the .net, I don't know how big they are ect..What I want to know is; Is it possible for them to register a TM on that name and then take mine. I am asking this because of this thread:
http://www.namepros.com/legal-issue...main-registration-constitute-first-usage.html
Does my forum with adsense constitute usage in Commerce? the .net company has products ect. Is such a name TM-able? I just started that forum a few days ago....was I the first in commerce use? I always thought, if you reg the name first, it's yours???

thank you...........

Well,
In your case, you don't need to worry about the possible TM issues. Have you checked the TM database for possible TM issues when you registered this name? Did you find any live TM registrations prior to the registration of your domain name? If not, no need to worry about the TM issues.

Hope this would help.

 

[0lgi]

As long as you registered the domain name before them , you don't have to worry for anything !!!

 

[DNQuest.com]

Several things here...

1- Adsense is not commercial usage. You need to be using the name in connectionwith bona fide goods/services. That will not give you a TM.

2- The "TM Database", there is no such creature per se, there is the USPTO which will list all the REGISTERED marks. But it will not have all the TMs, one can gain a common law TM though usage and be given TM protection.

3- Just because you registered the domain before a TM is established does not mean you can do what ever you want with the name. Even though it is written "Registered AND used in bad faith", I have seem many decisions where it is being interpreted "Registered AND/OR being used in bad faith. So you registered a domain and park it. A company then creates a product with that name. After they get rolling, your domain starts showing ads for them or their competitors, it could be established you are using the domain in bad faith. (Yes there are many factors involved and I simplified it). I own Smith.com, I have parking on it. A company is formed "Smith Motor Company", they are start making and take off. I then start selling cars on my site after they take off, it can be viewed I am using the domain in bad faith.

4- If you are using the domain to offer bona fide goods and services, you have a strong argument to defend yourself. That does not mean they cannot come after you.

 

[MyNet-Tony]

Hold on, wouldn't providing content be a service? And AdSense is Advertising Revenue. So I think it would eligible for a TM.

 

[DNQuest.com]

Hold on, wouldn't providing content be a service? And AdSense is Advertising Revenue. So I think it would eligible for a TM.

Nope. For a TM you must have a bona fide offering of goods/services. Ads and links are not content and do not create rights to a domain.

 

[CHILLY]

Nope. For a TM you must have a bona fide offering of goods/services. Ads and links are not content and do not create rights to a domain.

^ this is what I'm saying.....

o.k. let's move one letter over and pose this hypothetical situation:
(assuming oscommerce does not exist yet)

I hand reg oscommerce.com on in 2006.
somebody comes along and reg's oscommerce.net in 2007.
I just park oscommerce.com and then put up a forum with it.
The people at oscommerce.net have big plans and develop a shopping cart website program. They put a TM on the name.
I get a letter in the mail:

2 Things:

1. The name itself..If i have something completely different going on with my .com... Am I clear?
2. Or...Is it only if I put similar products on my .com that causes trouble.

Also Quote... "A company is formed "Smith Motor Company", they are start making and take off. I then start selling cars on my site after they take off, it can be viewed I am using the domain in bad faith."

4- If you are using the domain to offer bona fide goods and services, you have a strong argument to defend yourself. That does not mean they cannot come after you.

I reg Surfacecomputing.com in 2000 microsoft comes out in 2006 and puts a TM on the word Surface. From what I'm understanding is that If a TM is placed on a name--even if you had that name first..you automatically are put on the defensive if you use it by riding the coattails of the TM....OR...you can't have the name period.

The name in question isn't "great" but I'm looking at the concept of it, how it appears to me.

I.E.. it looks to me like if I had deep pockets and i saw that dnquest.com was regged in 1986 and is worth big money but you were a guy who got the name and used it for personal reason or whatever. I see there is no TM on it.
I register the .net and decide I want to start selling my own brand of potato chips. The name of the "new" company i just made up is dnquest potato chips. Are YOU now in trouble. Are you put on the defensive? Do you have to be careful how you use the name? As long as you don't put potato chips in your keywords or have anything to do with potato chips, your all right? Or can the name itself be taken from you no matter what?

I would guess it's not worth it money wise, but if names can be taken based on a TM like as stated above, it looks like if I wanted to, I can play stick up kid all day long.......but then again i guess the ownership of an "Idea" with $ takes precedence over the ownership of just a "name" without $. ?

 

[labrocca]

1- Adsense is not commercial usage. You need to be using the name in connectionwith bona fide goods/services. That will not give you a TM.

I disagree. Adsense is proof of commercial use actually. It's the income. The site however should provide something unique or identifiable. You can't claim adsense is proof of bad-faith if your statement is correct. Adsense automatically makes any site a "commercial" entity. It doesn't of course give a domain automatic TM rights but it's one step in it's establishment.

 

[DirtyAndy]

Either all this trademark stuff is crazy, or there is a great business opportunity here to get cheap domain names!

Find good .com domains that are parked, register an available extension, develop a small business that sells something based on that name, trademark it, then set the lawyers on the dotcom people.

$10 to register the domain
$500 to create a business that sells something
$300 to trademark the domain
$500 for a letter from a lawyer

$1310 and you can own most any parked domain you like (sadly porn is taken in every extension - because porn.com is a parked page!).

I missed flicr.com in a domain drop auction the other day - it went for $20K - but flicr.us is available......

I'm going to be rich!

 

[DNQuest.com]

I disagree. Adsense is proof of commercial use actually. It's the income. The site however should provide something unique or identifiable. You can't claim adsense is proof of bad-faith if your statement is correct. Adsense automatically makes any site a "commercial" entity. It doesn't of course give a domain automatic TM rights but it's one step in it's establishment.

Dang, about time. Adsense in itself is not commercial usage of a domain. Though Adsense is a commercial "venture". If the site itself does not provide a bona fide offereing of goods or services, the domain is not being used commercially. While I agree you derive revenue from Adsense, it doesn't automatically mean the domain commercial usage.

If your arguement was true and Adsense is commercial usage of a domain, then every TM domain with adsense is bad-faith and should be used against them in every UDRP. You can't claim Adsense is commercial usage and then say it is not bad faith. You can't have it both ways.

Chilly,

If you are using the .com with an active site and they came along afterwards, they would not have grounds to take the domain away, but they can still file agianst you. Remember, Anyone can sue anybody for anything, being successful is a different story. Now if you started advertising theirs services or their competitors AFTER they became established, that could hurt you. Now, if you have links and ads before they came along and they started a business in the same field, you still have a strong case since the usage was there before they were established.

As far as "having a name", it is not illegal to have a name, it is the intent or usage of the domain that makes it illegal. Surface computers, there is no way you would have bad faith intent at the time of registration in 2000. Again, if you start putting up ads nows the competes, that could get you in trouble.

Now as far as DNQuest and someone starts selling tater chips under the name DNQuest, I would claim my TM and state the name is unique and not generic. Now, if they registered teh .ent and sold tater chips with a different name. I can still claim my TM for it's uniqueness and I would have to prove the 2 items of criterea. 1- similar of confusinly similar to me tm 2- He as no rights to the name 3- registered and used in bad faith. Though it is a different field, it is the name uniqueness where I should prevail. Hope you don't plan on selling chips with my name on it?