trademark Trademark Infringement Notice (Help Required) NonTrademark name

[Yousaf Saeed]

Hi,

I registered a name few days ago after RUNNING Trademark search and found no record against "JournalImpactFactors.com' name and registered it.

Two days later, i received Trademark Infringement Notice as shown below from so called trademark owners.
Can anyone here please help me check if they are trademark owners of this name or not?

Copy of the email:

What should i do now? Shall i give up on this name? Or any other opinions

 

[jberryhill]

Hypothetical: if OP paid you to defend it, would you? Isn’t it sitting as a UDRP candidate as it stands now?

1. What I posted were three facts, and not a legal opinion or advice on the OP's circumstances. When engaged by a client, my advice is confidential.

2. Any domain name is "a UDRP candidate".

 

[offthehandle]

OP, Best of luck.

 

[Yousaf Saeed]

1. What I posted were three facts, and not a legal opinion or advice on the OP's circumstances. When engaged by a client, my advice is confidential.

2. Any domain name is "a UDRP candidate".

Thanks for your comment
I tried searching for the reported word mark "journal impact factor" in indian trademark database and found nothing, maybe i am searching it through outdated sites? I will highly appreciate if you can provide any reference where i can search for the reported trademark that was registered in India?

And, what would you do if you were at my place? (Opinion requested)

 

[offthehandle]

And, what would you do if you were at my place? (Opinion requested)

Contact him off line if you are serious. No public further discussion as I recall when I asked him a question before. Also as he stated in his response to me, basically your same question of opinion/hypothetical.

 

[wwwweb]

I don't know if anyone has asked this, but for what reason, or purpose did you register this domain, where did these keywords come up in the thought process of your mind?

 

[Yousaf Saeed]

I don't know if anyone has asked this, but for what reason, or purpose did you register this domain, where did these keywords come up in the thought process of your mind?

I am a scientist and this keyword is EXTREMELY IMPORTANT in the Scientific community. I registered this because i wanted to create a website similar to letpub dot com by also adding a unique and new product where researchers will be able to review scientific journals. There are over 10,000 scientific journals. If you study Master degree course or doctoral program in any International University then you won't get your degree unless you carry out research and publish your study in any of these 10,000 journals or else file a patent. And upon submission of your research for publication, it might take few days to months or even a year to get the first decicion of the journal that if they will accept your study for publication or not. By cutting the long story short, this is a long name but of extreme importance in the scientific community that ranks journals.

 

[jberryhill]

I'll second what Yousaf said about it being an important measurement. Citation statistics and the impact factor of the journals which cite one's work are crucial to performance assessment and advancement in academia.

The adage "publish or perish" has also become dependent on where one publishes and by whom one's publications are cited.

 

[Bob Hawkes]

The term impact factor has been around along time. This company was formerly called the Institute for Scientific Information and they claim to have invented the term and its calculation 60 yr + ago.
https://clarivate.com/essays/impact-factor/ Interestingly their essay show that ISI is trademarked but they do not indicate "impact factor" as a trademark term. I suspect it is combining journal impact factor that they object to.

I see that they list IP protection, trademarks and domains in their current areas of expertise. I suspect a fight with them would be hard to win.

Good luck whatever you decide to do.

Bob (not legal advice).

 

[Domains - Wanted]

2. Any domain name is "a UDRP candidate".

How true, how true!

But I venture to say that @Yousaf Saeed actually setting up a website at this address with subject matter, content as described above, now, that is almost for sure to result in UDRP action.

There is an old Russian military tactic called разведка боем (reconnaissance through attack, battle) that I've found very useful in life, business... dating, love!
It's a little risky, obviously, but almost always gets the job done. Well, you might get your face slapped or lose a little face on occation, but the upside is usually way out of proportion (otherwise, don't emply this strategy!). There are ways to assure you can have your cake and eat it too, @Yousaf Saeed... back to that in a sec...

You're a scientist, so may be risk averse. I am not. I'd go for it and see what happens... an UDRP being filed more likely as not. So what? Been there, done that, won two out of three (third one lost by not responding upon reflection that the domain in question was, well, not worth my time). What I'm trying to say, a UDRP case, while a nuisance, is not the end of the world. On the contrary, it may be an opportunity! Well defended, won, it sure as heck increases the sales value of the domain tenfold or more! Great publicity, too!

Now, back to your cake, namely the sizeable, mid to high $x,xxx investment developing the website, which you are worried about and rightly so. Well, short and dirty... why not simply set up your project and promote it at a secondary, reserve address. Then link the domain being contested to that secondary address. The proverbial red herring! And you defend it as if your life depended on it if/when the time comes! No matter the outcome, your investment remains safe and functional. And if you win, the contested domain, linking to the real website, will generate loads of interest and additional traffic.

So, played right, an UDRP can be your friend. And if there is no action taken, barring the occasional threatening letter, like the one you have already received, you can merge the two sites at your convenience. Or not.

Disclaimer: this is one possible strategy, what I may or may not do, depending on the intricaties of the case. This is not to say that this is the right course of action for you. I don't have enough information to offer reliable, actionable advice in this particular case.

 

[jberryhill]

Thanks for your comment
I tried searching for the reported word mark "journal impact factor" in indian trademark database and found nothing, maybe i am searching it through outdated sites?

https://www.tmdn.org/tmview/welcome

 

[carob]

https://tmdb.eu/trademark/EU-014510283-impact-factor.html trademark on Impact Factor

 

[.X.]

I have had 3 UDRPs filed on me in 18 years, I got the decision in all 3 cases, people get stupid, pissed off over stuff about nothing, at least that is what I expierence in my cases, trying to reason did no good,

One of my cases pertained to the complaint saying they had future intentions of filing a trademark on my exact keyword match domain name, and that they wanted me to surrender my domain to them for that cause

People just get stupid and ignorant sometimes.

 

[wwwweb]

I have had 3 UDRPs filed on me in 18 years, I got the decision in all 3 cases, people get stupid, pissed off over stuff about nothing, at least that is what I expierence in my cases, trying to reason did no good,

One of my cases pertained to the complaint saying they had future intentions of filing a trademark on my exact keyword match domain name, and that they wanted me to surrender my domain to them for that cause

People just get stupid and ignorant sometimes.

Did you ever sell any of those 3 to the losers?

 

[.X.]

Did you ever sell any of those 3 to the losers?

nah, although one of them did make an offer to purchase the name after the rendering of the decision of the UDRP.

 

[Yousaf Saeed]

nah, although one of them did make an offer to purchase the name after the rendering of the decision of the UDRP.

Taking into account that i have to contest it in court, how much expense should i keep in mind to contest it? I mean lawyer's fee and all that legal stuff expenses?

 

[.X.]

Taking into account that i have to contest it in court, how much expense should i keep in mind to contest it? I mean lawyer's fee and all that legal stuff expenses?

That is a good question. You might PM jberryhill to find out, I did not have to attain an attorney for the UDRPs, The complainant filed them, I rejected the accusations and they went to the panel for investigation, then judgments where rendered.

 

[lock]

The prize isn't worth the fight. Put your efforts into better domain.

 

[kam]

Hi,

I registered a name few days ago after RUNNING Trademark search and found no record against "JournalImpactFactors.com' name and registered it.

Two days later, i received Trademark Infringement Notice as shown below from so called trademark owners.
Can anyone here please help me check if they are trademark owners of this name or not?

Copy of the email:

What should i do now? Shall i give up on this name? Or any other opinions

That company sucks.

https://www.glassdoor.com/Reviews/Employee-Review-Clarivate-Analytics-RVW22701072.htm

I suspected they scan all the new registered domain and compare with the global trademark database.
I don't think they were represent their client to sent you that e-mail.

 

[Thelma]

...filed a perfunctory registration in India in January 2018

This "perfunctory registration" concept intrigues me. Tell me more... is it a new term of art in some alternate ip law universe? Registered trademarks and common law rights, on the other hand, are very real things Saeed needs to consider in order to make his best decision.

 

[xynames]

<<perfunctory registration>>

Modern lawyers we’re taught in law school to eschew all the legalese and write in plain English.

If what is written takes deciphering, or sounds arcane, then it’s not working. Too many lawyers try so hard to sound over-lawyerly not aware that no one ever taught them to write like that they just took it upon themselves to throw in the “Comes Now” and “Heretofore” garbage along with completely redundant uses of English such as “any and all” or (gag) “and/or.”

 

[Recons.Com]

<<perfunctory registration>>

Modern lawyers we’re taught in law school to eschew all the legalese and write in plain English.

If what is written takes deciphering, or sounds arcane, then it’s not working. Too many lawyers try so hard to sound over-lawyerly not aware that no one ever taught them to write like that they just took it upon themselves to throw in the “Comes Now” and “Heretofore” garbage along with completely redundant uses of English such as “any and all” or (gag) “and/or.”

How do you manage without "and/or"? I mean when you need to cover both in a clause.

 

[jberryhill]

is it a new term of art in some alternate ip law universe?

No, it's not some form of legalese. It's simply an English word.

National trademark registration systems broadly fall into two categories. In some jurisdictions, like the US, trademark registration applications are examined for things like distinctiveness, proof of use, and so on. In some other jurisdictions, the function of trademark registration is more along the lines of simply providing notice that "so-and-so claims this as their trademark", and registration is simply a perfunctory matter of collecting a fee and registering the mark.

per·func·to·ry
/pərˈfəNG(k)t(ə)rē/
adjective
adjective: perfunctory

1. (of an action or gesture) carried out with a minimum of effort or reflection.
   "he gave a perfunctory nod"
   synonyms: cursory, desultory, quick, brief, hasty, hurried, rapid, fleeting, token, casual, superficial, careless, halfhearted, sketchy, mechanical, automatic, routine, offhand, inattentive
   "a perfunctory review"
   antonyms: careful, thorough

 

[xynames]

And/or rarely means anything more than “or” one or the other. We’ve seen and/or so often it just seems like it’s necessary but it really isn’t.

From the Florida Supreme Court:
...we take our position with that distinguished company of lawyers who have condemned its use. It is one of those inexcusable barbarisms which were sired by indolence and damned by indifference, and has no more place in legal terminology than the vernacular of Uncle Remus has in Holy Writ. I am unable to divine how such senseless jargon becomes current. The coiner of it certainly had no appreciation for terse and concise law English.

And then look at this:

National trademark registration systems broadly fall into two categories. In some jurisdictions, like the US, trademark registration applications are examined for things like distinctiveness, proof of use, and so on. In some other jurisdictions, the function of trademark registration is more along the lines of simply providing notice that "so-and-so claims this as their trademark", and registration is simply a perfunctory matter of collecting a fee and registering the mark.

The bold are words that add nothing to the sentence - other than redundancy and verbosity. Also, we’re taught nowadays to avoid the passive voice, here it is rewritten in direct voice:

National trademark registration systems fall into two categories. In the US, we examine registrations for distinctiveness and proof of use. In some jurisdictions, all the applicant has to do is provide notice that "so-and-so claims this as their trademark,” and the trademark is registered upon payment of a fee.

Really what the writer is getting at, is that in the US we examine trademarks while in some jurisdictions they don’t. All that writing didn’t even make that clear.

Should probably conclude my revision, with this:
The difference being that in the US trademarks are examined closely for a variety of factors, while in some places, they are not examined at all and accepted as valid upon mere application.

 

[jberryhill]

Thank you for your substantive contribution to this thread. That's a great example, xynames.

Just out of curiosity, how would you go about correcting a sentence like this one:

"The Court has the authority and should exercise is
discretion to suspend any further terms of supervised release
for this defendant."

 

[jberryhill]

I realize you have some sort of personal issue driving this, but simplification can lose accuracy. This sentence:

"National trademark registration systems fall into two categories."

...is not actually true. There are quite a variety of differences, and some systems are hard to characterize as being clearly of one type or the other. One can draw a broad fuzzy line, but, no there are not simply "two categories" of national registration systems.

Nitpicking around with words is a fun game to play though, like the unnecessary ones bolded here:

"It is true that termination of supervised release
ordinarily may be requested after completion of one year
pursuant to 18 U.S.C. § 3583(e)(1). However, pursuant to
3583(e)(2), the court may "modify, reduce or enlarge the
conditions of supervised release, at any time prior to the
expiration or termination of the term of supervised release."

Another thing that is unnecessary is kneecapping a trademark application by unnecessarily claiming 2(f) status for a phrase which is not even descriptive in the first place. But, that's a story for another day.

Needless to say, casually dashing off a post on an internet forum is not quite the same as legal writing of any kind, and I don't spend a lot of time obsessing over it.