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Trademark Question...

Labeled as question in Legal Discussion started by thevictor, Aug 25, 2019.

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  1. thevictor

    thevictor Established Member

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    Thanks in advance for any and all opinions...

    I own a word.word gTLD domain name and recently noticed there was a newly (04/2019) registered trademark for the exact string. I regged this domain in 2017 and have not yet done anything major with it. I do have some plans for this name, but now I'm not sure if there are risks associated with using it.

    Has anyone had any similar cases? Do you have any advice or suggestions?

    Thanks again!
     
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    There's not enough information in your question as stated for any sort of useful answer.
     
  3. thevictor

    thevictor Established Member

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    Thanks for your response @jberryhill

    What I am wondering is if I regged the domain name in 2017 and someone else regged a trademark for the exact string and industry as my domain name, do they have a claim? How can I protect myself in this situation? Should I also register a trademark for the same string, but different application?
     
  4. DnameAgame

    DnameAgame Check out the new BrandPlease.com Gold Account

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    I think you still need to mention a few things
    date of your reg - date of their trademark - was trademark first use of the name (not domain) by them - are you putting the site up with ads targeting their customers - what is the area their mark covers (e.g food vs telecom) & more if you want actual legal answers
     
  5. thevictor

    thevictor Established Member

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    @DnameAgame Thanks for your response !

    I regged the domain name in 2017 and looks like the TM is live as of 04/2019. I don't have much experience with TMs but on the USPTO site it is listed as a "(4) STANDARD CHARACTER MARK" and it covers retail stores featuring certain type of products. I have not put up a site as of yet; just a standard lander showing that the domain may be for sale.
     
  6. WebFires

    WebFires Top Member VIP

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    The words will help out your question so much more...
    itll be easier for us to provide you with better information if you just provide the words.
     
  7. thevictor

    thevictor Established Member

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    @WebFires Do you mean the specific words under the Goods & Services on the TM?
     
  8. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    ...and even that is assuming that there is a registered mark in, maybe the US, and maybe the poster is located in the US too. But nine times out of ten, people posting here can't tell the difference between a pending application and a registered mark in the USPTO database.
     
  9. WebFires

    WebFires Top Member VIP

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  10. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    So, in other words, you are probably looking at a pending application that hasn't even been examined yet, and not a registered mark, right?

    The information you are posting has nothing to do with whether you would have a problem with your domain name.

    What sort of a mark are we dealing with here? Arbitrary, fanciful, suggestive, or descriptive? How long have they been using this mark? What country are you located in? What country are they located in? What, exactly, has been the content at the web page corresponding to the domain name? Is the domain name otherwise a dictionary word which matches the content at the web page? What do you mean by "the exact string and industry as my domain name"? How does your domain name have an "industry" if it has simply been a for sale page?

    About their trademark application... was it filed on an intent-to-use basis or an in-use basis? If it was filed based on use, then what is the date of first use?

    There's a whole world of information that might be relevant to your circumstances. You aren't getting anywhere near it.
     
  11. thevictor

    thevictor Established Member

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    You are not wrong! Since I haven't had to deal with a similar situation in the past, I am not sure what to look for as differentiation between a registered mark and pending application. One thing that does stand out, is the fact that there is no registration number and the word "Applicant" instead of "Owner", which I am assuming (and I don't want to assume) means that it is a pending application...
     
  12. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Well, that would be an important clue right there. So would whether the "Filing basis" is 1(a) or 1(b). All of the data in that record means something. It's not just there for entertainment purposes. Likewise, that "TSDR" button will lead you to even more information, such as an office action if the application has even been examined yet.

    But why get so hung up on a USPTO record that you don't understand? I'll bet you do know how to use Google and that you can probably Google the company name and this proposed mark, and find out a lot more about whether they've been using this mark, how long they may have been using it, and how well known is the mark, by doing a simple Google search. You'll learn more that way than you ever will by asking questions in a drip-by-drip dance of obscured information on a message board.
     
  13. thevictor

    thevictor Established Member

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    Honestly, I have no idea what the difference is between Arbitrary, fanciful, suggestive, or descriptive marks...

    I can only see the filing date of 04/2019 on the USPTO website. Can't say for sure how long they have been using it or if they are using it...

    Looks like they are in the US and so am I.

    No content other than "This domain may be for sale" and a contact form.


    I should say, the TM/ application is in the industry I intend to use it in.

    Not sure about this one...
     
  14. thevictor

    thevictor Established Member

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    Thanks for this @jberryhill The filing basis is 1(b). I am sorry I am asking questions that may seem basic or redundant to you, but since I haven't had to deal with this in the past, I thought I would ask NP for support, which is exactly what I got. I really do appreciate it!
     
  15. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    First off, if it is a use-based application, a claimed date of first use is in the data in front of you.

    But, more importantly, if you want to know if someone is using a particular mark to sell a particular set of goods or services, again, I'm going to bet you know how to use Google.
     
  16. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    This is a prime example of why I just don't believe things that people say when they ask questions about stuff they found in the USPTO database, and why it is dangerous to make assumptions about whatever people are trying to ask.

    This went from a "newly registered trademark" to a "pending intent-to-use application" with more time and effort than a confidential consultation would actually take.

    Now, sometimes ITU's are filed as a matter of convenience, in order to get something on file when the attorney may or may not have a date of first use handy from the client, since the filing basis can be amended later. So, it still requires some investigation other than looking at stuff in the USPTO database, since looking at that stuff is not helping you very much anyway.

    But if it is, in fact, a mark that they haven't used, in an application which hasn't been examined, then some relevant questions are what sort of a mark is it, and is it likely to be refused for one of several reasons. And, no, I wouldn't take on faith someone else's characterization of whether the proposed mark is suggestive, descriptive, or generic, absent that person having substantial experience with trademarks, because domainers throw those words around with wide inaccuracy.

    In general, would you win a UDRP dispute if YOU acquired the domain name prior to any use of a corresponding mark by someone else? Yes, you would. The UDRP requires that the domain name be registered in bad faith. If there was no trademark at the time (which is a separate question from whether the mark was registered), then the domain name could not have been registered in bad faith relative to a non-existent mark. There are some exceptions where the timing of the domain registration suggests the domain registrant had reason to know that a mark would be forthcoming, such as by inside information or media announcements.

    There is life beyond the UDRP, however. Is it possible for a later-filed trademark registration application to substantially wipe out the value of an unused domain name with few other useful applications? Sure. Let's say I register PogoDonut.com, and don't use that domain name for anything. Then, someone comes along and opens a chain of Pogo Donut shops, selling donuts, and they use pogodonutshop.com. They file a trademark registration application for their POGO DONUT name for donut shops and register their mark. Now, they aren't going to be able to do anything about my pogodonut.com domain name in a UDRP. However, there is no one who is going to want to buy the domain name, and if I start using it for donuts, then I'm going to be infringing their mark. My unused domain name has become worthless to anyone but them.

    But looking at things in the USPTO database is not going to answer many relevant questions for you. Whether someone has a trademark and been using it can have NOTHING to do "things in the USPTO database". The USPTO database can provide some helpful information, but only if you understand what you are looking at, which most persons who post here do not.
     
  17. thevictor

    thevictor Established Member

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    @jberryhill Thanks again kind sir! Your input and explanation is very much appreciated!
     
  18. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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  19. thevictor

    thevictor Established Member

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    Thanks for this @jberryhill Great info and for sure cleared some things up for me.

    After some digging in USPTO, looks like the TM application was semi-rejected and they are asking to some changes to the language in the application. Looks like they have 6 months to respond or the application will be considered vacated. If I wanted to register a TM of my own, would I have to wait out the 6 month period for them to respond or can I go ahead and do so now?
     
  20. jamesall

    jamesall Upgraded Member Gold Account VIP

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    It's either PENDING, LIVE or DEAD.

    Is the domain by chance Everything.World? Then we all have a problem. NOT.

    If the TM is for swimwear then it doesn't cover sunglasses or ice-cream. Get it? You can still sell it. The end user is the one who needs to be aware that they are not tramping on someone else's TM patch.
     
  21. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Oy. Records in the USPTO are either LIVE or DEAD. Period. There is no "PENDING" status. That's where domainers go wrong. Look at this example:

    Screen Shot 2019-09-04 at 8.39.49 AM.png

    Of those 13 records relating to "oy", there are:

    4 abandoned registrations
    1 abandoned application
    5 pending applications
    3 registered marks

    If those FOUR categories are not obvious to you by looking at that table, then it would do you a lot of good to figure out why I could group those records into those four categories simply by looking at that table.
     
  22. jamesall

    jamesall Upgraded Member Gold Account VIP

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    Uhhhh... *Laurel and Hardy music*.
    Yeah, nobody ever read "Trademark Pending". The process is now called ASSIGNED in some places and here at the USPTO it's a LIVE without a TM regnr.

    NOT the point, you are nitpicking and the USPTO is not the only source for TMs.

    If you apply, it's a PENDING application. Be that if it's to college, for a library ticket, whatever until it's granted. Don't try semantics and then use your own argument against yourself.

    Why are you complicating something simple and you work in this field? Couldn't you just have outlined your point.
     
    Last edited: Sep 4, 2019
  23. Peter

    Peter Top Member VIP ★★★★★★★★★★

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    Are you suggesting that the field of trademarks is simple? Far from it. Also regardless of wether a trademark is fully approved or not does not mean that you would be infringing. A registered and approved trademark just makes it easier to enforce.

    I personally have a lot of respect for any advice jberryhill says. He has been involved in many UDRP cases in the past and has plenty of experience.

    If you beleive trademarks to be a simple issue then feel free to represent yourself if you ever get a UDRP case. I doubt you will be successful without professional help from someon such a jberryhill who is seasoned in the process. In fact many general lawyers wouldnt touch such a case as they lack any experience or knowledge.
     

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