question Registering Trademark Domains - The Critical When Question

[Charac]

Dipping into the ACPA -- per registering trademark names that are the same as, or close to new domain names:

Understanding that name marks, must be distinct or famous for this to apply...

- Is "distinct" considered the day forward of a USPTO registration date ? Or must the process be given time to accrue?
- Still yet, can this all be retroactive to date of first use on application. If and when a intended registration does occur?

Since the process can realistically take 12 to 15 months, and since about half of all TM applications are denied and may not end up gaining a TM after all. Nobdoy actually knows until the date arrives.

Then again, according to these folks: https://content.next.westlaw.com/Gl...ansitionType=Default&contextData=(sc.Default)

The ACPA applies to trademarks "whether registered or unregistered." Could they be referring to an oddball situation?

 

[jberryhill]

Would a TM holder that has filed with the USTPO be more likely to win a UDRP case than a TM holder who has not filed?

Having a trademark registration makes things simpler because the registration serves as prima facie evidence of the validity and ownership of a mark. If you file a complaint on a common law basis then you have to provide a lot more evidence to back up your claim to own a mark. With a registration, that’s already done.

That looking to USPTO registrations could act as a false indicator.

What I’m saying is that most of the time, the average Namepros user has no idea what they are looking at when they consult the USPTO database. That is not the same thing as someone showing up with (a) a registration on the Principal Register and (b) evidence of ongoing use of the mark, in the context of a UDRP proceeding.

The main point made above is that REGISTRATION IS NOT REQUIRED TO OWN A TRADEMARK.

As also mentioned, it is desirable to register one’s mark in order to have some procedural advantages and conveniences if one seeks to enforce one’s rights. So, sure, it helps to do that.

 

[NameGroove]

Having a trademark registration makes things simpler because the registration serves as prima facie evidence of the validity and ownership of a mark. If you file a complaint on a common law basis then you have to provide a lot more evidence to back up your claim to own a mark. With a registration, that’s already done.

Makes sense. Thank you - you are generous with your time and it is appreciated.

 

[scithe]

The Fredburger in New Mexico definitely reminded me of Buc-ee's.

For those unfamiliar with Buc-ee's, it's a big ass gas station with half a Walmart inside. I might be the only guy in FL not going gaga over it as they've expanded from Texas to here in the last few years.

There has been numerous litigation over the name including against Bucky's a similar convenience store out of Nebraska. I think initially they agreed to co-exist and not expand into states where the other already exists.

I read an article a while back that Buc-ee's started going after other animal mascot logos including ones that don't involve a beaver or the same color scheme or pose.

Could be a fun Google search. Also, Fredburgers on Tuesdays reminds me of the Taco Tuesday trademark where Taco John's had the trademark in New Jersey for longer than Taco Bell and when the mega company finally got their "win" they gave out free tacos last year.

 

[Charac]

Trying to understand this better:

With so many registrations on USPTO gone dead or else abandoned.

- Can this be used to affect the strength and continuance of a common trademark by the same holder?

- Are there cases where marks having gone dead, that have still been used to enforce rights?

 

[vrwrys]

Throughout so much supporting dialogue, this seems to be so much about what John Berryhill seems to be telling us above. That it's not so cut and dried. It depends on a case-by-case basis.
That looking to USPTO registrations could act as a false indicator.

Registration makes it easier to prove in case of a dispute. In other words, you don't have to go on a fact finding expedition.It's on file.Similar to copyright law,where your work is protected on the creation date.If it's not registered, you have to prove your work was done first.

 

[Charac]

Registration makes it easier to prove in case of a dispute. In other words, you don't have to go on a fact finding expedition.It's on file.Similar to copyright law,where your work is protected on the creation date.If it's not registered, you have to prove your work was done first.

Agreed. Although you've responded to my post that was aimed at: the prospect of a registrant winning more than a non-registrant (common trademark). Where I noted the "false indicator"(of supposed inherent power) that they might mistakingly hold.

...my message one way or another has become split off. No big deal.

 

[vrwrys]

Agreed. Although you've responded to my post that was aimed at: the prospect of a registrant winning more than a non-registrant (common trademark). Where I noted the "false indicator"(of supposed inherent power) that they might mistakingly hold.

...my message one way or another has become split off. No big deal.

Agreed. Although you've responded to my post that was aimed at: the prospect of a registrant winning more than a non-registrant (common trademark). Where I noted the "false indicator"(of supposed inherent power) that they might mistakingly hold.

...my message one way or another has become split off. No big deal.

I was just repeating what Mr. Berry was saying.If your question is about having added protection as a registrant compared to a non-registrant,that's not something I can answer.It definitely give you more credibility with an ® next to your creation than not.

 

[jberryhill]

the prospect of a registrant winning more than a non-registrant (common trademark). Where I noted the "false indicator"(of supposed inherent power) that they might mistakingly hold.

You are mixing up two things.

First off, when you register a mark with the USPTO, in order to maintain the registration, you have to show proof you are still using the mark at six years after registration, and then every ten years thereafter.

Now, think about that. A lot can happen in six or ten years.

Think about registering your car. Where I live, I can register my car for two years before I have to renew the registration. Okay, so two weeks ago, I had so much money from spending my time on Namepros, that I bought a new Lambo, and got a two year registration. I have a valid automobile registration on file with my state until November 2026.

Now, this morning, I drove it off of a bridge. I managed to escape, but the car sank to the bottom of a raging river and it's gone. I don't have a car anymore.

You are in the business of selling car warranties, and you go searching through the state register of vehicles. You see that I have a registration for a new Lambo through 2026, so you decide to put me on your list of prospects to call tomorrow.

Do you see what happened there? I have a car registration, but I don't have a car.

So, no, I'm not going to be interested in buying a warranty for it, or anything else. It's lost at the bottom of a river.

The same thing happens with trademark registrations. In the US, the registration is valid only as long as I continue to use the mark. If I quit using the mark, and don't intend to start using it again anytime soon, I no longer have a mark. Maybe my company went bankrupt. But, if a mark is not used for three continuous years, then it is presumed to be abandoned - whether the registration is still alive or not. The registration could be near the beginning of a ten year renewal period, so it's going to sit there as a LIVE registered mark for nine more years.

So, that's just one of the problems of making assumptions based on trademark registration data.

What then happened in this discussion was that a different question was asked about enforcing a trademark.

Well, duh, most sane people who have abandoned a trademark aren't going to be filing UDRP's or lawsuits seeking to enforce the mark. What would be the freaking point? I want to make other people stop using a mark that I don't even use myself anymore?

Asking "Is it easier to enforce a mark if it is registered?" is a different question from "Can I assume a mark is still enforceable if I find a registration for it?"

Notice what I said above:

That is not the same thing as someone showing up with (a) a registration on the Principal Register and (b) evidence of ongoing use of the mark, in the context of a UDRP proceeding.

Typically, when someone files a UDRP complaint, the first section they have to prove - "the domain name is identical or confusingly similar to a mark in which the complainant has rights" - looks like this:

"The Complainant is Bigco Widgets. We sell "Bigco" brand widgets. We have a website at Bigco.com where we sell our widgets (Exhibit A - website). We sell $1M worth of widgets a year (Exhibit B - shareholder's report). Our widgets were voted "Best new widgets of 2015" by Widget Magazine (Exhibit C - copy of article). We own US TM Reg. No. 8675309 issued in 2017 for "BIGCO" for widgets (Exhibit D - copy of US trademark registration)."

And that's it. The US trademark registration proves that the complainant owns a valid trademark, and the other stuff proves that the mark is being used on the goods in question.

If the domain name is BigcoWidgets.com and was registered in 2018, the Respondent is probably going to lose, unless they are a reseller of Bigco widgets, only sell Bigco widgets on the site, and make it clear that they are not Bigco. If it is a "for sale" page or a parked page, it's gone.

Without the trademark registration, then it would behoove the complainant to go a bit further and show that "Bigco" is recognized in the market for widgets as their widgets in particular, is not descriptive of widgets, etc.. With a trademark registration, those questions are already presumptively answered.

But that's an entirely different question of someone ELSE looking at the trademark register and seeing a registration for BIGCO for widgets, and then not doing the ADDITIONAL research of finding out whether the mark is in use or may have been abandoned years ago, and it's just a zombie registration.

 

[Charac]

But that's an entirely different question of someone ELSE looking at the trademark register and seeing a registration for BIGCO for widgets, and then not doing the ADDITIONAL research of finding out whether the mark is in use or may have been abandoned years ago, and it's just a zombie registration.

Thank you for sharing your expertise through this clear practical example.

BTW - congrats on your recent win of Augis.com