Trademark question

[markfromslo]

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?

 

[WhoaDomain.com]

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

I admit I do forget to add disclaimer " I am not a lawyer" to my posts but who doesn't?

Then again everything said on a public forum should be ALL taken with a grain of salt. Whether lawyer or NAMEPROS schmuck.

A LAWYER will ALWAYS tell seek you to seek legal counsel ie. PAY.

Anyone would be an idiot to take anything said in a forum as LAW. Even on AVVO a lawyer version of Quora it is advised to seek legal PAID counsel.

And that website is full of "helpful" experts.

Even if their advise is RIGHT. The final words will always be.

SEEK LEGAL COUNSEL.

This is NOT AVVO.

That said anything I say whether right or completely wrong is irrelevant.

Unless the OP is a 10 year old and my advice is somehow accepted as LAW and child follows thru. Then I should feel responsible.

But I doubt OP is 10 years old.

Threads like these are targeted because they are obviously the perfect outlet to find clients for lawyers.

I don't see any posts from lawyers on the sale of OKBoomer.com.

No comment from lawyers about how that domain which expired and dropped was caught.

AFTER
AFTER
AFTER

TM was filed.

Isn't that worse than OP's original scenario?

I don't see any lawyers commenting how obviously bad that purchase was given the facts.

I gave my advice based on the basic rules of thumb at least in domaining.

That a domain registered prior to TM is free and clear.

If I ask 100 random domainers (seasoned or not)
right now if it's free and clear. How many would say yes?

Did I know that there is a risk of bad faith in purchasing a domain in aftermarket after TM. Nope.


It seems as though Berryhill has decided to use me as an example of what not to do. Uses my mistakes as "examples" of NO NO's only to bump himself up as "the expert".

Two can play that game.

I can sit here and just track Berryhill myself and just keep Googling "Berryhill Loses".

And trust me no one WINS all the time. Casino rules.Eventually everyone loses.

So shall I sit here and just wait for a "hit" for those keywords?

And then use that loss to say "don't listen to Berryhill because he lost this case".

Shall I go there?

Nah. I got better things to do than track some "expert".

If Berryhill chooses to use me as an "example" perhaps I should charge a consultation fee?

Nah. That's what lawyers do. I'm too cool for that.

Sorry to derail this thread OP.

Take my advice or don't. You have a brain. Berryhill seems to believe you don't because he has taken it upon himself to save someone who in his eyes "doesn't know any better" that you might listen to my advice without question like an idiot.

So many assumptions.

Just use common sense. Think about it.

What is BerryHill's motivation by jumping on my advice?

$$$$$$$$$

Maybe not now. Later?

You know the answer to this.

Me? I believe you do have a brain and never expected you to listen to me.

As far as I know I thought I was right. That's it. It's looks like I was wrong. Sorry.

Best of luck buddy.

 

[StartupsBrandsCom]

Hello, to add my understanding onto the subject in this discussion,
Here at NP' forums the main trends on buying are actually forming the good trend in the regards of regulations, for example, the best wanted/buying domains are 4 letters and brandables in two forms - the made-up names and generic keywords. And that is mostly in line with TM regulations,per my information, as so random 4 letters are rarely applied to new TM(and existent are "assured" anyway), made-up brandables are mostly unique creative names that, the big businesses are not going to file as TM(complexity in marketing plan approach), and generic key words brandables are mostly a common terms/phrases in the wide use, not depicting extraordinary business purpose for registering and approving the phrase as TM.

Another opinion regarding

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..

-there was some Law reference the clears the "bad faith" intent if domain is used for information purposely meaning with creating a website for a domain should somewhat assure the intent.

 

[WhoaDomain.com]

I'll just end this short and sweet ok? Whatever I said? Right or wrong irrelavent.

Any expert lawyer will tell you.

The only GOOD ADVICE is a BILLABLE ADVICE.

That said all advice on public forums can't be trusted. If you say THAT then you might as well say all advice on public forums are wrong.

And the only advice that is remotely CORRECT is one that's PAID for.

Threads like this are just incubation on a Petrie dish with the end result a BILLABLE Event at some point. Usually from someone reading this thread. Reading the "expert".

Even in law forums like AVVO where all the lawyers are. The ultimate advice is SEEK LEGAL COUNSEL. Which means the advice of lawyers on a lawyer FORUM can't be accepted as 100% correct unless it's BILLABLE.

If I'm wrong then say it and prove it minus the snark. How does it benefit the conversation to add my track record into it? It only serves one purpose. EGO.

I have seen more manners in a uneducated garbage truck man.

Does anyone not notice every single time I post this guy always takes this route with me?

Seriously does no one think this is wrong?

Or does a PhD makes him immune to basic rules of engagement? Like how you talk to people?

My mistake? I say things based on what I've learned on here and everywhere else. I don't do it to harm people purposefully. Do I make money in doing so? Nope.

Let end this now. This crap is raising my blood sugar and I'm diabetic and that's a no no.

@jberryhill
I took it personal because you made it personal.

I get it man. You are on here selling yourself as the expert. From one hustler to another.

Clap clap clap.

But please don't play Knight and shining armor when you are just a hustler like us peddling your thing.

Unless you are a billionaire that doesn't need to hustle for money? Like we do? Please forgive me for not being 100% convinced of your charitable contributions to this community.

Because GOOD DEED is a promo.which begs the question. Did you do the good dead out pure kindest or self promotion?

Always be weary of free gift bearers.

Nothing is ever REALLY Free. You'd be a fool to assume that.

If someone as saintly as the Pope one day called a dumb person a dumb person in public how quickly do you think the label of saint would become meaningless?

Pope like PhD is just a label. It's no guarantee of manners.

Yes in this scenario that dumb person is me. Does that still make what jberryhill did less unappealing?

Yes.

Fact.
1. Jberryhill tracks my activities and posts and knows them pretty much by heart and can quote me by memory.
2. I don't do the same for him.
3. I don't go and keyword search for Trademark on NP. Berryhill does like he has money in it. Don't get it twisted. Berryhill is here to sell himself and his services. AS HE SHOULD. I can appreciate that.
4. I don't troll BerryHill's posts. I can guarantee you if there is a TM thread and Berryhill sees my username in there it's like catnip. And as he said it is his DUTY to correct me even though there are plenty of law threads Berryhill could have commented on but did not.
5. There are many many wrong advice on NP I can guarantee you the frequency by which Berryhill comments on my post?

IT IS ALMOSY LIKE HIS BUSINESS BENEFITS FROM IT.

WHEN YOU CORRECT SOMEONE.
THAT MAKES YOU THE EXPERT.
AN EXPERT THAT YOU ARE MORE INCLINED TO HIRE.

SIMPLE.

 

[markfromslo]

Alright.
Give me manners anyday over knowledge.

Manners Maketh Man.

Look in the mirror and start with yourself.

 

[Michael Ehrhardt]

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?

Go for it ...

A TM is a stupid invention from not smart people

 

[frank-germany]

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.

I'd rather trust Mr. Berryhills advice than yours, @Avtar629
...mainly because I like his avatar better then yours...

 

[WhoaDomain.com]

Go for it ...

A TM is a stupid invention from not smart people

I wouldn't start that here buddy. You might get trolled too.lol

 

[Larion]

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?

Baby ?

 

[branding]

i fight the German Olympic Team

there are no Germans !

?

 

[Michael Ehrhardt]

Fair enough. You're free to have your opinion.

TMs protected my business on various occasions so I'm all for it.

let me share the SaveDotOrg thing to my 30.000 linked connections and focus on domaining

 

[Michael Ehrhardt]

Cool. You're right. Thanks for that! Share the word!

done

 

[markfromslo]

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.

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.

 

[markfromslo]

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

 

[markfromslo]

XYNames is a lawyer? Sure explains a lot! Lol jk XYNames

LOL!

 

[dande]

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

 

[Internet.Domains]

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.

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!

 

[WhoaDomain.com]

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 acquisition date by the CURRENT domain owner. Don't take our word for it .. go look in existing UDRP decisions and 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 an 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.

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.

 

[Internet.Domains]

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

Come on @Ategy your better than this.

 

[WhoaDomain.com]

When the Constitution of the United States was written, there was only one of those things that people were guaranteed a right to have. Show me a country which put a right to have a plumber in their founding document.

You can take it personally if you wish, but I have a very difficult time watching you, time and time again, tell people things which if taken seriously by them can get them into a lot of trouble.

Your commentary about money is amusing, since I certainly don't make any money from posting at Namepros. But if I can specifically warn people about what you have to say on legal topics which, as here, is usually spectacularly wrong and dangerous, then I will consider that to have been time well spent.

It's all about the "comeback". Do a nice deed here and there. Looks good publicly at the expense of throwing someone under the bus.

That's a lawyer for ya.

Free advice= everyone is watching = future clients

A great look. Like me don't like me. Irrelevant.

There is a civil way and your way.
Everyone can see that.

It AMUSES EVERYONE on NP that everytime I post on anything TM that you swoop right in like Superman. Lol

Whatever floats your boat buddy.


There is "Yo Avtar629. Sorry bro but you are wrong. It is actually risky because..."

The way you talk? You'd never survive the Bronx.
You'd offend even the nicest guy.

So it's your mission then huh? Me?

Your "example". Your "case study".

See you on Google buddy.

"Berryhill Loses".

Don't lose anything ok?

Best of luck.

 

[StartupsBrandsCom]

@Avtar629,
Thanks for the honest response, you made a point

Threads like this are just incubation on a Petrie dish with the end result a BILLABLE Event at some point

Yet the Laws as all know were and are written for general public USE, lawyers are best reference learned interpreters and entrepreneurs, although could their public deed/duties seems hard all together with many uncleared/unknown situations for average people, in many countries where there are no commercially-repressive defined country systems, in recent years evolved in the senseless absurd corruption governing, not imaginable and impossible in modern world nations.

 

[branding]

Go for it ...

A TM is a stupid invention from not smart people

TMs are not just about protecting the business, but also about protecting the consumer. We all benefit from their existence.

How that would be a stupid invention is beyond me.

 

[oskaaay]

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.

There is more to learn about this topic. Your contribution help point out some of them

 

[WhoaDomain.com]

I'd rather trust Mr. Berryhills advice than yours, @Avtar629
...mainly because I like his avatar better then yours...

Hehe. Everybody is a comedian! Thanks.

 

[Michael Ehrhardt]

TMs are not just about protecting the business, but also about protecting the consumer. We all benefit from their existence.

How that would be a stupid invention is beyond me.

Fact : who decide what is a TM or not ?
do you have any experience yourself about TM ?

to argue with about TM is strange - i fight the German Olympic Team

 

[Michael Ehrhardt]

?

habit ?
Still i HATE Trademarks !!! and i fight The German Government ( DOSB ) Deutscher Olympischer Sportbund
The National Olympic Team and The President THOMAS BACH of the International Olympic committee ...

to be continued