Trademark Filed on My Domain – Published for Opposition

[Rebies]

I’ve owned a fairly common phrase .com for years now. To give an example, the domain is similar to “GoodDeed . com”. That is not the domain in question, but very similar. The domain is two words, most anyone will be able to tell you what the domain is about when they look at just the domain name itself.

Recently someone contacted me to buy the domain. In doing a trademark search I found “Good Deed” was filed for a trademark late last year and is “Published for Opposition” until next week ironically. The TM was filed by the same company that contacted me to buy the domain. I’ve owned the domain for more than two years, so the domain was owned far prior to the filing date of the trademark. However, the use of the trademark is way off I think. They are using “GoodDeed.com” for some sort of skin product (again as a similar example).

Is there any reason to oppose the trademark? Can we oppose by just owning the .com but no trademark ourselves? There is no site on the domain now, and up until today was simply parked. Does filing for opposition give us any legal support if the domain were ever disputed? At this point there is no common price where we would sell the domain and they would be willing to buy it.

In a way I feel – let them get their trademark. They will only help the brand of our .com. Our .com would likely never be used in the way they are applying for the trademark – I can’t think of anyone wanting to use the phrase “Good Deed” the way they want to. Eventually I figure if they grow their brand big enough, they will want the .com domain anyway. So it’s catch 22. Do we oppose the TM or just let it go? We own the domain because it's a unique, common phrase, and can be used by us for many things. (or sold for a good price) But this company getting a trademark on this phrase - does that complicate things?

Thanks for input.

 

[evertonian7uk]

There is no site on the domain now, and up until today was simply parked.

you could be looking at reverse hi-jacking here, since theres no site, theres no usage for you to defend,

you'll need a big gun to help you out here, someone with more experince than me, but with no usage to fall back on, it might hurt you in the long run, taking of parking now doesnt make much difference, they can see it was parker for the time you owned it,

have you got something to go up there, something you've been developing?

 

[DN BROKER]

Just develop a temp site fast, dont PARK IT

 

[Kate]

TM rights stem from usage. In your case there has been none, so I don't think you have grounds for opposing the TM

 

[Rebies]

Yes, I stoped parking the domain yesterday and put up a really well designed banner / logo that I had a designer create for the site a while back. Essentially says "comming soon".

I don't think it's reverse hijacking. Not yet anyway. They have not indicated any interest to try and take the domain from us and even offered a fairly big sum of money. Just that amount is about 1/3 of what we would accept for the domain sale. I'm fairly comfortable because we owned the domain for much longer, and will launch a site on this domain in a few weeks to protect ourselves.

 

[evertonian7uk]

I'm fairly comfortable because we owned the domain for much longer, and will launch a site on this domain in a few weeks to protect ourselves

speak to someone more qualified mate, its not as easy as just throwing a site up, although it helps,

they may not have come after you for the domain aggresively, but they have declared there interest by offering you cash for it, now there TM'ing what they wanted from you, sounds like your going to need some help, contact Jberry here, i think you need more accurate advice on this one.

 

[Marck]

They have not indicated any interest to try and take the domain from us

You don't consider a big sum of money an attempt to try and take the domain from you? They tried the carrot, now they will try the stick, IMHO.

 

[Rebies]

interesting point Marck.

Well it sounds like right now there is no ability for us to oppose the mark since we've done nothing with the domain up until now. Too bad we had not launched a site on this domain last year.

 

[Kate]

At least you did register the name before the TM. In theory you are safe but make sure you do not use the name in a way that conflicts with their TM.

 

[R9V.com]

if they are trying to establish an internet based brand or business - and are trying to aquire the domain by way of bad faith via filing a TM on it - you can show that and prove to court their ill-intentions for filing TM

I have this unwarranted type of situation here and there - I've found people with do anything to get a domain they want and dont deserve it. You should be able to win this if you state you case clearly as shown in the example above.

 

[labrocca]

Your opposition would need to be grounded in some reality. Do you find something against TM law in the application..such as the words being used descriptively? Because your ownage of the domain itself without usage isn't grounds to protest.

If I was you...I would try to contact them and work out a price. Long term it's probably in your best interests and of course they would feel the same. They are in all likelihood a motivated buyer.

Don't even be shy about telling them you see the TM application. That might save you a couple low-ball offers. Just get to the point. You have domain...they SHOULD want it. They won't get it unless they are willing to pay X amount (hopefully you are reasonable).

 

[akcampbell]

If I was you...I would try to contact them and work out a price. Long term it's probably in your best interests and of course they would feel the same. They are in all likelihood a motivated buyer.

I wouldn't do that. If you can't agree on a price they could use this as evidence of bad faith on your part. I would let them carry on investing time and emotional energy into their project, don't do anything that would infringe their TM or show bad faith. If they bid you again, tell them you hold the domain for development and that they are welcome to make an offer but that any bid is unsolicited.

 

[Rebies]

labrocca - good point about not being shy about the TM with them. And yes, we're willing to sell the domain. But our price for now is higher than they've offered.

Right now I'm overall not too concerned, but a little bit. I could see it going the wrong way with an unethical company. I will definately give John Berryhill a call if anything goes akward here.

 

[labrocca]

If you can't agree on a price they could use this as evidence of bad faith on your part.

You are wrong...they contacted him first. Which basically proves he wasn't acting in bad-faith and that they believe he does have rights to the domain...otherwise they wouldn't make him a monetary offer.

 

[IAmAllanShore]

Mind posting the TM application without anything that would identify it for us? Specifically, filing date, filing basis, etc.

-Allan :gl:

 

[Rebies]

I will send a PM with the Trademark / domain to anyone that asks for it. Just don't want to publicly post it. I'm sure you understand.

Allan - I sent it your way.

 

[IAmAllanShore]

You sent a TESS link that had expired - send the hard link, or just the name/#

-Allan :gl:

 

[Takwa]

where I can check TradeMarks? most site I found need me to pay

 

[Jasdon]

where I can check TradeMarks? most site I found need me to pay

http://www.uspto.gov/

for US TMs





Rebies, don't think because they are being nice(ish) now, that they will continue being nice once they've got their TM.

 

[IAmAllanShore]

Can't comment on the merits of their TM, of course, but somewhere for you to start looking to give yourself a little more information:

The filing basis is "1B" according to the app you sent me, a 1B filing basis means that the are not claiming to have used it in commerce yet - that would be 1A, Use in Commerce - but they intend to use it in commerce. So the filing date in December is the current date you will most likely be dealing with.

Although the mark drawing code is SCM, the Goods and Services are a very limited section based on the application, and should give you a good idea of what NOT to put on your website that you are developing.

The final impact of all of this may be that you decide it is easier and cheaper to just sell it to them, but only you can make that call.

Best of luck,
-Allan :gl: