Please give me inputs on TM issue!

[sker]

heya guys,

today i got an email from a Patent Attorney saying i've registered a dot com version of his client's TM. His client filed a TM on sept 2006 in the UK and i've registered the .com version on December 2006. The TM didn't inspire me to reg it.

The same scenario happened with Thistle Hotels UK. They filed a TM on 1979 but purchased Thistle.com for 20k few months ago.

Am i right...? what should i reply to them?

your valuable inputs are appreciated.

V

 

[accent]

If it is a dictionary word or a phrase in common use you are legal. If it is a made up word or phrase that would appear to refer to the company then they have a right to it.

ThistleHotel.com - directly competes with that company - not OK, unless you got there first.
thistle.com - does not matter how many trademarks for "thistle", as long as you do not sell hotel related services or products you are OK
A website on Thistle.com, not owned by Thistle Hotels, that sells hotel related services or products - not OK, unless you got there first.

Thistle is a dictionary word, trademarks for thistle do not have power over other uses of the word. If they deliberately misspelled it: thisssle then it would be stronger.

All that said, someone can sue you or start UDRP procedings to take away your name regardless of the strength of their case and those things are expensive, even if you win. So do respond to them and be businesslike.

A hint: Do not offer to sell the name to them (unless they ask first), and remove any advertising that may compete with them or be their ad (Sedo is bad about that). Such things are considered indicators of cybersquating.

 

[Name Trader]

Firstly. we are not lawyers. You need a lawyer experienced in domains and trademarks.

As accentpal has stated. If you have anything on your website which infringes their trademark, you are probably doomed. But, they can't just take your domain away without just cause. You really need a lawyer to defend your situation. They have 2 causes of action. They can file trademark infringements in a court of law, which is gonna be expensive to pursue and defend, or they can file a WIPO action to take the domain away from you by arbitration. Which is going to cost them $1500 plus a whole bunch of legal fees. You really need a lawyer to defend your case. If you are unwilling to consult a lawyer, your position is probably greatly weakened, but I'd politely tell them that you do not consider you are infringing on their clients trademark and leave it at that. You'll probably either then, a) find yourself in a court of law for trademark infringement, or b) in WIPO arbitration for the domain. So it would be best for you to lawyer up now, rather than later.

 

[accent]

Lawyers are the safe road. However the fact of life is that many people do not have $5000 + to defend a name, perhaps a reg-fee name. A nasty letter does not assure legal action will happen and a legal action can be won without a lawyer, although, I agree that the chances are better with an attorney. - - If that attorney is one of the small handful that is familiar with domain names, a run-of-the-mill attorney would not know what he is doing regarding some parts of this specialty.

 

[gazzip]

If it is a dictionary word or a phrase in common use you are legal. If it is a made up word or phrase that would appear to refer to the company then they have a right to it.

ThistleHotel.com - directly competes with that company - not OK, unless you got there first.
thistle.com - does not matter how many trademarks for "thistle", as long as you do not sell hotel related services or products you are OK
A website on Thistle.com, not owned by Thistle Hotels, that sells hotel related services or products - not OK, unless you got there first.

Thistle is a dictionary word, trademarks for thistle do not have power over other uses of the word. If they deliberately misspelled it: thisssle then it would be stronger.

All that said, someone can sue you or start UDRP procedings to take away your name regardless of the strength of their case and those things are expensive, even if you win. So do respond to them and be businesslike.

A hint: Do not offer to sell the name to them (unless they ask first), and remove any advertising that may compete with them or be their ad (Sedo is bad about that). Such things are considered indicators of cybersquating.

I totally agree with accentnepals reply, this sums it up exactly the way I beleive it works (although I am not a lawyer )

It is also possible & legal for different people to have TradeMarks for the exact word/words if they are used for a different purpose.

(I can post some examples of this if you need them, it would take a bit of hunting to find them again)


.

 

[The Stealthy One]

Ask yourself this question: is it worth the fight?

 

[sker]

well guys, thx for the inputs.... i sent them an email saying i'm not in a position to transfer the name. Afterall they own .co.uk version of it and they only TM protection in the UK.

I think i should be getting an attorney.
We'll see how it goes....

very intimidating situation but i'm proud i have something that people want.

V