Someone is trademarking my domain name

Located in Legal Discussion, started by john888, May 21, 2017


  1. john888

    john888 Established Member

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    A company is in the process of trademarking a word phrase that I own in dot com. The word phrase is similar to e patch and in an up and coming bio sensors medical wearable industry. The US trademark application is now approved for publication.

    Is there a way I can oppose the trademark since the trademark would render me powerless to use my domain name within this medical field?

    The trademark may stop a suitor from purchasing my URL. I might be interested in investing in a startup by allowing the use of this domain name in exchange for company shares. Possibly this opportunity may also be interrupted by this present trademark application.

    I have obviously purchased the domain name 2 years ago as an intent to use because I wanted to be involved in this industries growth.
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  2. RevolutionaryDomains

    RevolutionaryDomains Top Contributor VIP ★★★★★★★★★★

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    Read through the short NP thread link listed below, specifically John's post discussing TMs, as it may give you some insight. Maybe reach out to John, and/or your own lawyer, to discuss your options and rights, especially now that someone has beat you to a TM filing.
  3. James3

    James3 Established Member

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    Yes. It has been published *for opposition*.

    You need to file an opposition if you're currently using the domain for anything.

    Also be aware that trademarks are limited in scope.

    If your name is (for example) and there's a company that makes blenders filing for a trademark, they're going to have a trademark "scope" that's most likely limited to appliances. It doesn't mean you can't use the domain for a dating advice website (for example) or something outside their scope or zone of expansion.
    Last edited: May 22, 2017
  4. Ategy

    Ategy Arif M, VIP ICA Member Gold Account

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    Certainly seek out the advice of a legal or trademark professional.

    That being said .. from my limited knowledge of trademarks .. unless you are actively using the trademark .. then you don't have any rights to it.

    Seems the other way around is a bit different .. if you register the trademark .. then you actually don't need to be actively using it for 2 or 3 years I think.

    But as mentioned above .. the trademark only applies to specific classes of goods/services .. if they filled the TM for biomedical stuff .. and that's what you wanted to do .. then you could have an issue. Plus you can't contest the trademark because you aren't actively using it.

    All of that however .. does not affect in any way your ownership of the domain. If you owned the domain before their TM then they theoretically can't UDRP it from you (unless you actively use it in bad faith like making ad revenue from ads in their TM class)

    Consult with your legal/TM council about possibly renewing the domain now before the TM becomes active. There have been a couple of bad UDRP rulings that considered "renewal of a domain" as bad faith .. so if you have many years left before you need to renew then that could possibly strengthen your position from a legal stand point. (Definitely consult with a professional to make sure it's not too late now after initial TM filing).

    Also be careful how you approach them .. you might want to sell it to them .. but that too can get messy and get you in trouble depending on how it's done ...

    Good luck with it :)
  5. john888

    john888 Established Member

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    Thanks for all advice,
    Applicant has not submitted proof of use, but as you say, I believe that a trademark can be submitted intent to use. Unfortunately I don't have the funds to develop a suitable product to show that the mark is in use. A simple "website under construction" isn't going to prove use. If applicant's trademark is approved then I am limited to selling the domain name to only one company, His. And yes, I can use the domain name for another use but this would diminish its marketing value. I don't approach companies with existing trademarks. Your idea of renewing the domain name for a long period is very interesting and probably would work since their trademark hasn't been approved.

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