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Trademark question

Located in Legal Discussion, started by slobizman, Dec 5, 2019

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  1. slobizman

    slobizman Established Member ★★★★★★★★★★

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    Hypothetical situation, similar to one I am looking at. Let's say you want to buy the name, AcmeBeer.com, but there is a trademark on "Acme Beer and Wine" and they own AcmeBeerandWine.com. Is buying AcmeBeer.com a violation of trademark law?
     
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  2. xynames

    xynames XYNames.com PRO VIP

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    Hypothetical situation: you get free advice off the internet instead of paying an attorney and end up losing your a** or sued.
     
  3. slobizman

    slobizman Established Member ★★★★★★★★★★

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  4. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com Gold Account

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    If domain in question was registered prior to trademark. OK buy it


    But even then, there are tons of news of TM holders trying to reverse highjack domains registered prior to their TM but most loose.

    Bottom line don't buy the domain thinking you will next reach out to obvious end-user

    Only smart option is buy and sit and wait for the to contact you.

    Reaching out can be grounds for "bad faith".

    Too many good desperate lawyers willing to "give it a try" to scare you. Costs them nothing more than a postage stamp or email.
     
  5. slobizman

    slobizman Established Member ★★★★★★★★★★

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    Thanks. Yes, I never reach out to people to buy my names. I just wait until they come to me, which works for me very well.
     
  6. MapleDots

    MapleDots Top Contributor VIP

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    HeHe

    Since you are a lawyer you are basically saying....

    Shut the f&[email protected] up and pay a lawyer so lawyers can retire in comfort.

    :xf.laugh::xf.laugh::xf.laugh:


    It never hurts to ask a question.... this board has been known to have a couple of lawyers that visit and give out pretty darn good advice.... even for free :xf.wink:
     
  7. slobizman

    slobizman Established Member ★★★★★★★★★★

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    And I should add, I do of course understand about reverse hijacking dangers. The point of my question is if the "Acme Beer and Wine" trademark would cover "Acme Beer."

    At some point it should not. Taken to the extreme, I doubt an "Acme Beer, Wine, Snacks and Sodas" trademark would protect "Acme Beer." But I could be mistaken.
     
  8. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com Gold Account

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    XYNames is a lawyer? Sure explains a lot! Lol jk XYNames:xf.wink:
     
  9. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com Gold Account

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    It's not about whether THIS OR THAT.

    It's about how many hungry TM lawyers are out there willing to give it a shot and try to scare you and how confident you are. So many URDP cases that have been thrown out due to it being "thin".

    The point is URDP have been filed for much less than ACME BEER vs (long tail version TM).
     
  10. slobizman

    slobizman Established Member ★★★★★★★★★★

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    Okay, I think I'll skip it. Thanks!
     
  11. slobizman

    slobizman Established Member ★★★★★★★★★★

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    LOL!
     
  12. jberryhill

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

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    An astoundingly bad piece of advice as usual.

    https://www.wipo.int/amc/en/domains/search/overview3.0/#item38

    3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?

    3.8.1 Domain names registered before a complainant accrues trademark rights

    Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)

    [See also section 1.1.3.]


    Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

    ---------

    It would be nice if there were not people who insist on giving dangerously bad advice on internet forums, which is what @xynames was driving at.

    Trademark disputes are what lawyers call "fact intensive". Not all trademarks are entitled to the same scope of what might or might not be considered confusingly similar, and it takes a relatively decent amount of experience and specialized expertise to provide reliable answers.

    Contrary to what someone said above, I don't provide advice online and neither should any lawyer.

    When you consult with a lawyer, among other things you are entitled to confidentiality in that advice. The confidentiality of that advice is one of the things that lawyers are required to protect. So it is instant malpractice for a lawyer to provide you with legal advice on a public message board.

    Furthermore, while hypotheticals are fun to kick around, my long experience with people who don't know the law but who do post hypotheticals is that they often fail to construct a hypothetical which accurately reflects the circumstances. And, again, due to the fact intensive nature of trademark problems generally, that is hard to do.

    In a situation like "ACME BEER AND WINE", let's suppose they have a registered mark, and let's suppose they engage in the sale of beer and wine. In all probability, they have likely disclaimed the terms "BEER AND WINE" from the registered mark in the first place, such that "ACME" is the primary distinguishing feature of the mark in the marketplace of beer and wine vendors. Hence "ACME BEER", "ACME WINE" or "ACME BEER WINE SODA AND CHIPS" are not going to be considered to be a dime's worth of difference.

    But whatever you do, please, do not take anything @Avtar629 says seriously, on the subject of trademark/domain name disputes. I'm sure he's a fine person, but the things he says on legal topics are nearly 100% wrong nearly 100% of the time.
     
    Last edited: Dec 5, 2019
  13. dande

    dande Gold & Silver VIP

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    If I have AcmeBeer.com long before the complainant acquired his TM, there's nowhere I'm going to give up the domain.
     
  14. Larion

    Larion Established Member

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    there are certain terms which can not be trademarked as a "Word Mark", as these terms are generic.
    Then companies register the term as an "Image Mark" (Figurative Mark) at the trademark-office, because it is the only way to get their trademark successfully registered (EUIPO).

    A trademark registered as an "Image Mark" (Figurative Mark) is merely protecting the graphical design-elements, e.g. the "Logo Design".



    A "Word Mark" has a much higher value compared to an "Image Mark" (Figurative Mark), when you look at trademark-law.

    https://euipo.europa.eu/ohimportal/en/trade-marks-examples

    @jberryhill
    What are the legal differences in this case with regards to domains ?
     
    Last edited: Dec 5, 2019
  15. topdom

    topdom Top Contributor VIP

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    Probably bad investment. May be risky in case of udrp, but not being able to sell is a bigger risk, and losing good and normally-safe names because of such activity is even a greater risk. If I decide to do a risky thing, probably I would quarantine such activity to minimize damage in the worst case scenario.
     
  16. Ategy

    Ategy Arif M, NameCult.com TheDomainSocial.com VIP Gold Account

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    Trademark issues are not as black and white as most people assume.

    On paper "Acme Beer" is not the same, and you'd assume does not infringe on the trademark rights of "Acme Beer and Wine"
    while
    On paper "Acme Beer and Wine" would infringe on the TM rights of "Acme Beer".


    However there are actually two separate factors that could (and very likely would) be in play against you here ...

    1) "Acme Beer" could and probably would be found to be "confusingly similar" to "Acme Beer and Wine". In which case it would indeed be treated as the same term/mark.

    2) While the website is "Acme Beer and Wine", chances are that the company actually uses "Acme" actively in commerce .. this is particularly notable since within the trademark class (33 = Alcoholic beverages), both "Beer" and "Wine" are likely to be considered industry terms, and thus somewhat redundant. If I were looking to secure a trademark within that class I would focus on "Acme" alone since it's the only unique part of the brand. In which case "Acme Beer" most certainly does infringe upon "Acme" within that specific trademark class.


    It would be wise to assume they got the longer domain name because the shorter one "Acme" was not available, and not because their actual trademark is "Acme Beer and Wine". But either way, I'd definitely avoid getting something like "Acme Beer", because nobody will want to buy it from you to start a company because of the other is too close to being the same brand. Which leaves your only potential buyer being the company you're likely to be found infringing upon.


    All that said .. it's important to note that if this is just an example, it might not apply to what some might think is a "similar" situation. Each domain is different with how they relate to specific trademarks.

    Not only that .. but in "grey zone" situations, one judge or UDRP panellist might find a domain to be "confusingly similar" to a specific trademark, while a different judge or panellist might not. So definitely be careful with this sort of domain.
     
    Last edited: Dec 5, 2019
  17. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    If lawyers were right all of the time there wouldn't be a judge or jury. For a lawyer to say someone is wrong 100% of the time is like saying a lawyer is right 100% of the time.......Time for some lawyer jokes.:ROFL:
     
  18. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com Gold Account

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    Alright alright. I have mixed feelings about this post. One the one hand J.Berryhill loves to pick my posts to scrutinize. One the other hand, whether they like me or not. If my username passes their lips. I have a fan.

    I'm sure Mr. berryhill is a professional lawyer. I am not a lawyer.

    What are lawyers exactly? These are people who if there is enough money on the table ANYTHING IS POSSIBLE.

    Can you really trust a person when all they care about is money?

    Case in point I had a lawyer for an accident case.

    THAT lawyer ended up selling me out to the insurance company. Got paid a cut to have me take a deal much lower than it should have been.

    As far as the domain that was registered prior to TM and heck why not throw ALL domains registered since 1990?

    Why don't we all just DUMP them all and take up another hobby since it is obvious we ALL made a mistake and this whole domaining thing is just as complete waste of time?

    All you people nodding your heads from what J berryhill said about my poor advice in agreement.

    Please. Go to your accounts right now and DELETE.

    Please. Let's see it. Let's see those deletes.
     
  19. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    Don't let it get you down, it's not you. I have never seen you give advice or an opinion and PUT SOMEONE DOWN or give the advice/opinion at the expense of someone else. A professional is more than an expert in a field, a professional will have the ability to not insult others and put people down when giving their advice/opinion. A professional will not need to make themselves look and feel better by denigrating others.

    Keep being you @Avtar629!
     
  20. Ategy

    Ategy Arif M, NameCult.com TheDomainSocial.com VIP Gold Account

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    Seriously @Avtar629 .. your comments really are not appropriate here.

    Yes 100% agreed there are both unethical AND incompetent layers out in the world .. but @jberryhill has time and time and time again proven that he is both knowledgeable on the subject and that he is a very ethical lawyer.

    In fact, I'd go so far to say that his participation is probably THE biggest asset of NamePros!


    That's not to say he's perfect or might get something wrong from time to time .. particularly considering the subtleties of domains and trademarks. Not all judges agree with each other, so it's very unlikely anyone in legal services will ever be 100% correct all the time.


    But that being said .. he is correct here .. the date UDRP panellists will look at is the acquisition date by the CURRENT domain owner. Don't take our word for it .. go look in existing UDRP decisions as well as the rules/laws he linked above .. it's quite clear.

    A potential exception to this is if the domain was acquired as part of a sale for an entire active business. But in that case the owner of the domain is the business, and the date in question would be when the business acquired the domain.


    Not only that .. but there are even situations where you could still be in trouble even if you "acquired" the domain before the trademark was registered. If it's close enough to the usage/registration date, a judge or panellist might judge you to have been speculating on the potential/probable trademark.
     
    Last edited: Dec 5, 2019
  21. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com Gold Account

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    I'm waiting NAMEPROS. I waiting over at expireddomains.net for those AGED SWEET ONE WORD DOMAINS registered since 1990.

    I'M WAITING!

    Hmmmm.

    J.Berryhills argument seems legit. Everyone should be dumping their domains like Enron stock right now.

    I wonder why it hasn't happened yet?

    Strange......


    If the world was to blow up tomorrow and they had to choose useful people and only have 5 seats left to go to a New Planet and your choices were.

    1. Doctor
    2. Plumber
    3. Cook
    4. Carpenter
    5. Lawyer
    6. Baby

    Which would you choice for that last seat?
     
  22. BaileyUK

    BaileyUK Account Closed (Requested) VIP

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    Now, now Don't jump out of your pram just because you post has been correctly identified as bad legal advice. What would you rather happen ? that your incorrect advice was allowed to stand unchallenged.
    I too, find your posts quite off the wall at times - Why not just tone down your replies and offer them as 'considered opinions' rather than as some know-all barrack-room lawyer
     
    Last edited: Dec 5, 2019
  23. Larion

    Larion Established Member

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    the "date" of a trademark-registration or the "date" of a domain-registration is not the only factor.

    It also depends on whether a trademark is a "Word Mark" or a "Figurative Mark", for which "Classes" it is trademarked, for which country/countries it is trademarked, etc. - therefore it also depends on HOW a domain-name is being used.

    In many cases, there are also several trademarks for the same "term".
     
    Last edited: Dec 5, 2019
  24. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com Gold Account

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    There is no doubt jberryhill is an expert. Just don't appreciate the time. After the first sentence I get where "it's headed" so I stop reading.

    I see you point. To be honest I never knew about that other stuff about the purchase of an old domain after a TM.

    It's been said over and over again on NP that such purchases were sound just because the reg was before the TM.

    I assumed this as basic domaining 101 LAW.

    This is why I said it without doubt and in fact with a bit of confidence .

    Did not know all that other stuff.

    But I still think the underlying thought of my post is true


    ANYTHING IS POSSIBLE.

    INCLUDING GETTING SUED.

    SO LONG AS BIG MONEY IS INVOLVED.
     
  25. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    Come on @Ategy your better than this.
     

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