question Legal question regards Trademark/Copyright

[JeffreyL]

Hi,

Just in the process of selling off some domain names I purchased 20+ years ago. While doing this I came across an excellent post by Bob Walks showcasing the Domain Insights tool on SquadHelp, it has a feature where you can check trademark infringements.

I ran a few of my 23 year old domain names through it and they show that some of the names are now trademarked. Pretty sure they weren’t trademarked when I had registered them 23 years ago.

So, how do I stand legally given that I hand registered them 23 years ago, and at that time they didn’t have a trademark against them?

Any help appreciated.

Cheers, Jeff

 

[draco]

If they're US trademarks, you can find out when they were registered at www.uspto.gov/trademarks/search

That doesn't mean they didn't acquire some rights before they registered the trademark.

From what I understand, a UDRP requires the complainant to show the domain was registered and is being used in bad faith. If your registration pre-dates their trademark / rights, they'll have a hard time showing it was registered in bad faith.

I'd also be careful of using the domains in bad faith. For example, if you have ads on any of the domains, make sure they're not related to the trademark holder's trademark.

None of the above would stop them from filing a UDRP or suing you to try to get the domain.

Disclaimer: not a lawyer, not legal advice.

 

[jberryhill]

First off, that tool is crap.

It makes no distinction between registered marks, pending applications, refused applications, intent-to-use applications and provides no useful information concerning dates, claimed goods and services.

Making any kind of business decision on the junk that comes out of that tool would not be a good idea. As a starting point for further research it might have some use, but TMDN.org and USPTO.gov are still better starting points.

The best starting point to find trademarks is, of course, Google, but I've pretty much given up on trying to explain that anymore.

 

[jberryhill]

To demonstrate what a pointless tool this is, I ran "wallet.link".

The Squadhelp tool generated, as "trademark conflict" number 1:

In reality, that is a pending intent-to-use application filed in 2021:

It has been finally refused by the USPTO, and the refusal is pending appeal:

If you had registered "wallet.link" several years ago, should you be worried about that nonsense? No.

So, that tool does not even reflect whether or not pending applications have actually been registered.

This kind of nonsense (see also trademarkia) is a real pain in the ass in practice. Hardly a week goes by where I don't hear from someone saying "I found a trademark on my domain name" when there is, in fact, no such thing.

That's also why, in posts on the legal forum at Namepros, whenever someone says "I found a trademark..." it shouldn't be taken at face value, because in the vast majority of instances that person has no idea what they are looking at.

 

[JeffreyL]

Hi John,

"It makes no distinction between registered marks, pending applications, refused applications, intent-to-use applications and provides no useful information concerning dates, claimed goods and services."

Big thanks for taking the time to respond... very valuable input, I'll take on board.

Note: In confirming your observations... I run AddRite.com through SQ and returned a bucket load of tm's, none of which were close matches.

In support of SQ. I did find the AI generated Descriptions and Potential End Users helpful.

Appreciated.
Cheers, Jeff

 

[JeffreyL]

Hi Draco,

Thanks for your input... appreciated. All helping me get my head around issue.

Cheers, Jeff

 

[jberryhill]

In support of SQ. I did find the AI generated Descriptions and Potential End Users helpful.

That looks interesting, but automated ppc systems have a habit of converging on trademark secondary meanings, and I would not expect AI to differ in that regard. I’ll run some examples to demonstrate that.

 

[jberryhill]

So, giving it a hopeless example…..

Ideal for startups in the laundry industry, this domain can be the perfect choice for online detergent retailers, laundry service providers, or even eco-friendly cleaning product manufacturers. Tidedetergent.com will undoubtedly make a lasting impression on potential customers, ensuring their laundry needs are met with utmost precision and care.

…

Potential End Users For Tidedetergent.com​

Companies that would be interested in buying the domain name Tidedetergent.com include:

1. Procter & Gamble: As the manufacturer of Tide detergent, they would be interested in acquiring the domain to reinforce their brand presence and prevent competitors from using a similar domain.

2. Laundry detergent manufacturers: Competitors such as Persil, Gain, or Arm & Hammer might be interested in purchasing the domain to redirect traffic to their own websites, potentially gaining a competitive advantage.

That’s sort of interesting. It identifies TIDE as a Procter & Gamble brand of detergent (this is the best selling brand in the US), but seems to think it would be a good idea for competitors or startups in laundry-relevant businesses to use.

The system needs to be taught that is not a good idea. So, it might take you over a cliff if you are not sensitive to figure out whether it has come up with trademark relevant pitch targeting.

 

[jberryhill]

Now, I did run examples which it navigated fine. Trek is a leading brand of bicycle, but also a dictionary word. I was actually surprised that for TrekSupplies, it made suggestions relevant to trekking, and did not suggest things like bicycle parts or apparel.

Likewise for a proposed “monster” name, it did not produce suggestions relevant to soft drinks or audio/video cables.

But I don’t know if that’s simply luck.

 

[JeffreyL]

Thanks for feedback John. Yes, think SQ is good for a starting point... but need you to go in and tweak before signing off on it. Most of mine were pretty much on point. For me was just wanting the AI for SEO. I could even feed what they produce back into AI and ask to have description rewritten for SEO and give AI some long tail keywords. Thanks again.