Trademark Question (LLC)

[Avabelle]

A company has applied for a trademark under the name of one of my domain names. They have added LLC to the name.

Do I need to fight this trademark application in order to protect my domain name? Not sure what LLC means?

Thanks in advance!

 

[Kate]

Do you use the domain right now or it is just parked ? Next, does the trademark application relate to the same field of activity ? Your domain is not at risk since it was registered before. Unless you do something stupid.
LLC = limited liability company
It's a common suffix like Inc.

 

[jberryhill]

Your domain is not at risk since it was registered before.

That's an open question, since we don't know whether they might be able to establish common law rights prior to the application.

 

[jberryhill]

A company has applied for a trademark under the name of one of my domain names. They have added LLC to the name.

In this type of situation, I would usually run through the following checklist:

1. Is it an intent-to-use application or a use-based application (indicated by "1(a)" or "1(b)" in the application?

2. If it is a 1(a) application, what is their alleged date of first use?

3. When was the applicant formed? This is usually determined by looking at the applicant and their charter jurisdiction (stated in the application itself), going to the relevant Secretary of State (for US), looking up the applicant, and checking their date of formation.

4. What other information can you determine on use of the mark by the applicant (or an individual predecessor) by searching Google, their website, etc..?

5. What kind of term are we talking about here? Generic, descriptive, suggestive, arbitrary, or fanciful?

6. What is your domain name doing? Is it doing anything relevant to the goods/services of the applicant (or, in the case of generic or descriptive terms, is it doing something relevant to the generic/descriptive meaning)?

Those are the kinds of things you would want to figure out before deciding what, if any, course of action is preferable.

 

[Avabelle]

In this type of situation, I would usually run through the following checklist:

1. Is it an intent-to-use application or a use-based application (indicated by "1(a)" or "1(b)" in the application?

2. If it is a 1(a) application, what is their alleged date of first use?

3. When was the applicant formed? This is usually determined by looking at the applicant and their charter jurisdiction (stated in the application itself), going to the relevant Secretary of State (for US), looking up the applicant, and checking their date of formation.

4. What other information can you determine on use of the mark by the applicant (or an individual predecessor) by searching Google, their website, etc..?

5. What kind of term are we talking about here? Generic, descriptive, suggestive, arbitrary, or fanciful?

6. What is your domain name doing? Is it doing anything relevant to the goods/services of the applicant (or, in the case of generic or descriptive terms, is it doing something relevant to the generic/descriptive meaning)?

Those are the kinds of things you would want to figure out before deciding what, if any, course of action is preferable.

Generic term...I applied to fight the application. Thanks!

 

[jberryhill]

I applied to fight the application.

That's interesting.

What, specifically, did you do?

Just out of curiosity, did you learn about this situation from an email notifying you that someone had done so? Because those emails are scams, and I really wouldn't expect someone who is unfamiliar with the complex opposition process to be able to "apply to fight the application" if we are talking about a US trademark registration application.

If, on the other hand, we are talking about one of those scam emails that says "someone has applied to register your name as a mark, send us money and we'll fight it", then you just thrown your money away.

 

[jberryhill]

Hey @Avabelle , could you indulge me in an answer here?

How did you find out about this situation?

Was this something you found on your own, or did you receive an email about it?

 

[ThatNameGuy]

A company has applied for a trademark under the name of one of my domain names. They have added LLC to the name.

Do I need to fight this trademark application in order to protect my domain name? Not sure what LLC means?

Thanks in advance!

Ava...I see where there have been a number of responses to your question, but I can't see them because I have two members of NamePro's on ignore who are likely to be the ones responding to your question. I'm neither a lawyer, nor do I work for a lawyer, but I would first do a little research to better identify the company. Why? They may be the perfect buyer for your domain, assuming you want to sell it. Note, just because they are just now applying for a TM doesn't mean they haven't had their name for years, maybe even before your domain was first registered. I'm in the process of applying for my third TM within the last 5 years, and it's something you may want to consider? You don't need a lawyer to do that for you, but if you have a lot of money, you may consider a lawyer you trust. Finally, I don't feel comfortable sharing my thoughts openly with you here on NamePro's because of past experience, but you could send me a private message if you would like. I see you're from Canada, and I've met some fantastic folks from all over Canada who have been very helpful...I luv Canada!

Bulloney

 

[Ollie3000]

I think you may have a potential sale on the horizon or a scammer. I'm certainly not an expert on TMs and regularly ask for TM advice here on NPs but this seems like the perfect punter for your domain. If it's the .com of their business then they will want it. If you owned it prior to the creation of their business then I think they would struggle to get it from you.

 

[Jurgen Wolf]

Note, just because they are just now applying for a TM doesn't mean they haven't had their name for years, maybe even before your domain was first registered.

Their name doesn't matter at all here, even if it was 100 years ago.
For UDRP - only TM date will be considered.

 

[Jurgen Wolf]

And if you operate in Canada...
Then their TM should be also registered with Canada coverage to fight against you...

 

[carob]

To fight the application you need to have a valid reason, such as that you are already offering goods and services using that mark, in the class of goods for which they are applying for a TM.

Just owning a domain you do not use is a pretty unlikely basis for opposing someone else's mark. Though I guess it will make them more aware of your domain.

 

[carob]

Their name doesn't matter at all here, even if it was 100 years ago.
For UDRP - only TM date will be considered.

Not in the USA - as someone said already, it is date of first use in commerce there. So if they produce some old leaflets showing they used the name in trade before the internet or domains even existed no domainer can pre-date that.

 

[Ollie3000]

To fight the application you need to have a valid reason, such as that you are already offering goods and services using that mark, in the class of goods for which they are applying for a TM.

Just owning a domain you do not use is a pretty unlikely basis for opposing someone else's mark. Though I guess it will make them more aware of your domain.

Yea but just having the domain, especially if it's the .com means this would be an asset to the OP. The newly formed company will want it and the OP won't have to give it up. (However they might not be able to use it in the same field)

Therefore they could maybe make a good sale
imo

 

[Jurgen Wolf]

UDRP is unified procedure...
The same rules for all applicants regardless of their country.

Or you are talking about .US domains???

 

[Jurgen Wolf]

https://dnattorney.com/udrp-logic-t...name-to-find-no-right-or-legitimate-interest/

 

[carob]

https://dnattorney.com/udrp-logic-t...name-to-find-no-right-or-legitimate-interest/

It says exactly what I said

Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration

In the USA, unlike most other places, the rights to a name can be established by usage long before any formal registration of a mark.

Actually if you look carefully at the .uk arbitration procedure they seem to leave the door open to something similar.

 

[Jurgen Wolf]

USPTO marks have no any power on Canadian territory...
Or not???

 

[jberryhill]

USPTO marks have no any power on Canadian territory...
Or not???

Depends on what context you mean.

In a UDRP, the complainant must prove three things (discussed extensively in my previous postings). The first of those things is whether the domain name is identical or confusingly similar to a mark in which the Complainant has rights. For the purpose of that first criterion of the policy, it doesn't matter where or under what law the Complainant has trademark rights. Any trademark from anywhere will satisfy that first criterion.

Likewise, if one has a registered mark in the US, one can apply for registration in Canada under certain treaties by which the Canadian Intellectual Property Office will grant the US filing date to the Canadian application.

But if you are talking about a trademark infringement action in Canada then, yes, a Canadian court is going to want to see Canadian trademark rights.

 

[Jurgen Wolf]

I mean the scenario when this domain in question (owned by OP) is used strictly for local business activity in Canada...

 

[jberryhill]

I mean the scenario when this domain in question (owned by OP) is used strictly for local business activity in Canada...

Well, I'm not aware of the domain name, how it is being used, or where this trademark registration application was allegedly filed. Perhaps I missed something in the brief comments posted by the OP, so we don't know whether we are talking about a USPTO application and a domain name used for strictly local business in Canada, or whether we are talking about a CIPO application.

Certainly, with a US trademark application, one does not "apply to fight the application" unless one is talking about a full-blown opposition proceeding, which is an administrative trial proceeding that certainly goes well beyond simply "I applied to fight the application".

What it sounds like to me is that the OP received one of those scam emails of a common variety in which the email claims that a trademark application has been filed somewhere, it has been spotted by the helpful sender of the email, and they will fight it for a fee of some sort. This is a very old scam, which pre-dates the internet.

But, hey, the OP has been offered the personal help of someone with zero experience in trademark disputes, and who said he didn't know what UDRP stood for until a few weeks ago. What could possibly go wrong?

I'm much more concerned that the OP is being taken in by a scam, than in any guesses as to whether there is, or is not, some reason for the OP to be concerned about a junior trademark registration application, wherever it might be. But the original poster doesn't seem particularly interested in reaching an informed answer.

 

[Cruncher]

I don't believe showing old leaflets with some text on would prove trademark and rights to a specific domain.

Afterall,anyone could print some leaflets off and say they are from the 1980's and start demanding 3letter domains to be transferred to them!

 

[jberryhill]

Afterall,anyone could print some leaflets off and say they are from the 1980's and start demanding 3letter domains to be transferred to them!

That's easier said than done.

I've actually seen instances of this sort of thing in domain disputes. The problem is that if the Complainant is, for example, ExampleCorp Ltd. of the UK, and you go to the UK Companies House site and find that ExampleCorp Ltd. was formed in 2005, then those leaflets are going to be a problem.

In one case I defended involving forged evidence, this was pretty easy to figure out. The Complainant is a CPR training company, and they had presented a sample "Certificate of Completion" of their training course bearing a date of 2003. The problem was that the "Certificate" stated the person had completed a training course for a method of CPR which did not exist until 2005:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0823.html

Although the certificate was apparently intended to provide evidence that the Complainant has been using a PROCPR trade mark since at least April 8, 2003, it seems clear from the standard form wording on the certificate itself that the document would not have come into existence until 2005 or later. The Complainant has not provided any explanation for the insertion of 2003 and 2004 dates on a form of certificate which, on its face, would not have been in existence in those years.

 

[Cruncher]

That's easier said than done.

I've actually seen instances of this sort of thing in domain disputes. The problem is that if the Complainant is, for example, ExampleCorp Ltd. of the UK, and you go to the UK Companies House site and find that ExampleCorp Ltd. was formed in 2005, then those leaflets are going to be a problem.

In one case I defended involving forged evidence, this was pretty easy to figure out. The Complainant is a CPR training company, and they had presented a sample "Certificate of Completion" of their training course bearing a date of 2003. The problem was that the "Certificate" stated the person had completed a training course for a method of CPR which did not exist until 2005:



Although the certificate was apparently intended to provide evidence that the Complainant has been using a PROCPR trade mark since at least April 8, 2003, it seems clear from the standard form wording on the certificate itself that the document would not have come into existence until 2005 or later. The Complainant has not provided any explanation for the insertion of 2003 and 2004 dates on a form of certificate which, on its face, would not have been in existence in those years.

Good point there,but if the company was proven to be around in the years stated,then fraud in these types of cases could be quite easily committed.

 

[jberryhill]

Good point there,but if the company was proven to be around in the years stated,then fraud in these types of cases could be quite easily committed.

Like I said, it's easier said than done. If a product has been on sale for any length of time, it is difficult to claim that "oh, we advertised since 1995 with these leaflets" when there is simply no digital trail of anyone mentioning the product anywhere else. I've seen a lot of crappy UDRP complaints and a lot of bogus evidence from fairly sophisticated companies. The entire point of trademark rights is that the mark embodies goodwill and reputation among relevant consumers.

Most of the time when a UDRP is filed, the complainant does not even expect the domain registrant to show up, so they don't put in a lot of work with the expectation that false statements will be scrutinized:


http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-2179

The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.