Trademark similarity question

[markfromslo]

I have a situation that is similar to the hypothetical domain name and business names I'm making up for the example below.

I own a domain name called CompleteVR.com, which was registered five years ago. Two years ago a company started a business called Complete VR Systems and trademarked the name. I understand that I have no TM issue myself because I owned it earlier. However, I am wondering if this is enough to keep others from buying my domain name--fearful of a trademark issue--if they would be in the same general line of business as Complete VR Systems. And the only real use would be in the VR area. (again, these are hypothetical domain and company names I've used)

I'm asking because I need to decide if I should accept an offer the name now at a lower price that I would have otherwise wanted.

 

[Leo2k]

As long as domain was registered before the trademark registration, they can't win the UDRP / Wipo case.
But make sure your domain is not parked ( In which case it will show ads related to the industry which will lead to TradeMark Infringement) and not built with any content related to their business / this industry.
Make sure to have the proof of domain purchase with you which has the date info.
You may just hold it and sell safely when offers come up or put a for sale (only) lander page.

But since your domain was registered long before their trademark registration, there is no reason you have to afraid or sell it at a lower price.
(Not a legal advise) Check with other experts as well.

 

[markfromslo]

As long as domain was registered before the trademark registration, they can't win the UDRP / Wipo case.
But make sure your domain is not parked ( In which case it will show ads related to the industry which will lead to TradeMark Infringement) and not built with any content related to their business / this industry.
Make sure to have the proof of domain purchase with you which has the date info.
You may just hold it and sell safely when offers come up or put a for sale (only) lander page.

But since your domain was registered long before their trademark registration, there is no reason you have to afraid or sell it at a lower price.
(Not a legal advise) Check with other experts as well.

I understand that is the case for me. But someone buying the name from me now would not have the benefit of the name being registered before the trademark. What I'm really looking to figure out is if Complete VR Systems (my made-up business name) has any being on the domain name CompleteVR.com

 

[Revisiting]

Are you suggesting, (in this fictitious case that they trademarked)
CompleteVRSystems. which I believe could be trademarked. In that case that is the wording limit of their protection. ie, the whole TERM
They certainly wouldn't get a trademark for VRsystems It's far to descriptive. They probably would have a problem trying to TM completeVR again a descriptive. That's the problem with made-up scenarios. Their is nothing real there to judge on...

Your trying to ascertain the limit and scope of a trademark. Well every case is different. If it included a made-up word, ie Brandable then the scope can be widened - You can't make these examples up.

I think you need to read-up on what is an acceptable Trademark application. The general rule is when using dictionary words in a descriptive sense (and it gets through) then the protection is only for the complete term. you seem to be a bit amiss on what makes for an acceptable Trademark

 

[markfromslo]

Are you suggesting, (in this fictitious case that they trademarked)
CompleteVRSystems. which I believe could be trademarked. In that case that is the wording limit of their protection. ie, the whole TERM
They certainly wouldn't get a trademark for VRsystems It's far to descriptive. They probably would have a problem trying to TM completeVR again a descriptive. That's the problem with made-up scenarios. Their is nothing real there to judge on...

Your trying to ascertain the limit and scope of a trademark. Well every case is different. If it included a made-up word, ie Brandable then the scope can be widened - You can't make these examples up.

I think you need to read-up on what is an acceptable Trademark application. you seem to be a bit amiss on what is acceptable or not

I've seen so many "descriptive" trademark given, it always shocks me. The fictitious names I used here are really well-aligned well to my own case. What would or would not work for them would work or not work in my case.

I understand you are saying that in your opinion a "Complete VR Systems" trademark would not stop anyone from naming a business Complete VR (and try to get a TM if they can)? They would not run the risk of running a business with that name in the same area, virtual reality?

 

[Leo2k]

I understand that is the case for me. But someone buying the name from me now would not have the benefit of the name being registered before the trademark. What I'm really looking to figure out is if Complete VR Systems (my made-up business name) has any being on the domain name CompleteVR.com

In that case, it depends on for what purpose the domain was bought from you by the second person. If he runs something related to the other TM business that will become infringement.

Why not try different approach?
In this example, if they are selling VR gadgets but you are building a blog which has educational contents related to VR, there is no way they can say its infringing their trademark unless their main business is blogging and your website is trying to confuse this with that. Moreoever the fact that you registered the domain first stands as a stronger point.
You can try similar way on that domain and also a for sale banner on site. If the TM owner of the other business contacts you can sell it to him/her at a good price.
If someone else contacts you to buy the domain, you can better explain the issue to that person.

 

[Revisiting]

in your above case - as close as I can give an opinion. you would be safe.. There's many, many business out there with similar names in the same business type and with similar trademarks - You can't ask for extended TM protection for additional words. OR shortened version of the TM But I'll keep saying again and again. each case is different, each case is unique - which is why decisions are Judged on merits.

Now lets suppose somebody tried to emulate, blatantly copied your Website AND using a very similar domain, You could lose it at UDRP, Whereas the wording alone (The domain) might not have been successful.. Hope your getting my drift, there really no hard and fast rules but guidance. And the guidance of Case-law.

I don't wish to be rude - But get yourself a BASIC education on TM's, otherwise your not going to get anywhere. There's a reason lawyers earn a damn good living.

You read like you would like to understand the basics. (given your other post) Your not going to do that unless you look-up genuine cases. and understand the judgement . Not that you may always agree with the outcome.

Most cases are lost because they are not defended

 

[Revisiting]

They would not run the risk of running a business with that name in the same area, virtual reality?

No that's not what I'm saying. Somebody would be quite within their rights to run a Virtual Reality business on "CompleteVR" (would anybody want to in the same area - I doubt it) whether they themselves would be able to obtain a TM on the shortened version is also another matter.

Of course the domain may get challenged at UDRP. That doesn't mean they would win. (probably not) And they could challenge a Trademark application.. Geographic's and business reach come come into play. Don't try to think of these issues as set in stone with definitive answers. Common sense - normally puts you in the right ball park or thereabouts.

If your thinking of putting the domain up for sale - I don't see any problem (using your made-up case) Let the buyer do the Due Diligence

 

[markfromslo]

Why not try different approach?
In this example, if they are selling VR gadgets but you are building a blog which has educational contents related to VR, there is no way they can say its infringing their trademark unless their main business is blogging and your website is trying to confuse this with that. Moreoever the fact that you registered the domain first stands as a stronger point.

Except I don't want to develop a site.

 

[Revisiting]

Except I don't want to develop a site.

As I said put-up a a for sale page. Do Not approach the (longer version) TM holder. End -of

 

[markfromslo]

No that's not what I'm saying. Somebody would be quite within their rights to run a Virtual Reality business on "CompleteVR" (would anybody want to in the same area - I doubt it) whether they themselves would be able to obtain a TM on the shortened version is also another matter.

Of course the domain may get challenged at UDRP. That doesn't mean they would win. (probably not) And they could challenge a Trademark application.. Geographic's and business reach come come into play. Don't try to think of these issues as set in stone with definitive answers. Common sense - normally puts you in the right ball park or thereabouts.

If your thinking of putting the domain up for sale - I don't see any problem (using your made-up case) Let the buyer do the Due Diligence

Thanks. By the way, I've reached out to a TM attorney to ask.

As for it being up for sale, it currently is as (plain lander no ads) I'm not worried about that. And the reason I'm thinking about this more today is that I have an offer on the name, at about 60% of what I'd like to get. I may accept it so I don't have to think about any of this, but it's a damn good name.

 

[Revisiting]

Well if it's decent money. I damn sure your buyer has done their homework. Sounds like a 80% of expectation should arrive on the table. Nothing wrong in asking a lawyer - but, given your scenario I don't think it necessary. Once it's sold there are no repercussions. PROVIDING you've not made any misleading statements or assurances to secure the sale.

Why on earth were you worried about all these adverse outcomes. If you have a firm offer. are you worried it's the TM holder ?? - If you are don't be, because they would have definitely examined their options. I would still push it up 20% if that was deemed a negotiating offer. Not so sure (without knowing the name) maybe not if they've stated absolutely final offer.

Don't forget if they have tried to negotiate to buy and just don't like the price. That usually doesn't sit too well with a UDRP panel and could work against them.

Has the buyer ever mentioned UDRP ? or legal action. you do seem overly concerned considering it's a pending sale

 

[markfromslo]

Well if it's decent money. I damn sure your buyer has done their homework. Sounds like a 80% of expectation should arrive on the table. Nothing wrong in asking a lawyer - but, given your scenario I don't think it necessary. Once it's sold there are no repercussions. PROVIDING you've not made any misleading statements or assurances to secure the sale.

Why on earth were you worried about all these adverse outcomes. If you have a firm offer. are you worried it's the TM holder ?? - If you are don't be, because they would have definitely examined their options. I would still push it up 20% if that was deemed a negotiating offer. Not so sure (without knowing the name) maybe not if they've stated absolutely final offer.

Don't forget if they have tried to negotiate to buy and just don't like the price. That usually doesn't sit too well with a UDRP panel and could work against them.

Final thought has the buyer ever mentioned UDRP ? you do seem overly concerned.

I never said that I was worried it was a TM owner. I was only wondering if this TM could be an issue with buyers. If it could be an issue, I'd sell the name for a bit less than I wanted. If not, I'll hang on and get my price (it's an excellent name).

I don't know who this buyer is, it's through Afternic. Very well could be the TM owner. I have a BIN price and they called them to give low-ball offer. Through the broker, we've negotiated to their "final offer" about 60-65% of what I had wanted. Bought the name for under $50 and it's a mid $,$$$ sale. That's a nice profit, but I made a smart buy five years ago and I know it's worth more (if no TM issue). But a bird in the hand....

 

[Revisiting]

I wish I was in your position every day of the week. I honestly don't think you have a TM issue.. Trade Marks just don't reach-out the way the way you have envisioned. Something 'contrived' and unique is a different matter. But two words against three words TM in a general english text (and no other mitigating circumstances) Should be No problem if you want to hold.
I'm ignoring the simple 'The' etc.. maybe your buyer has already sounded out the possibility of obtaining a TM themselves - In which case that could be a future issue with the next offer (potential buyer) decision, decisions all part of the game eh.
I've sold many good names where Global businesses (including Apple) just don't bother trying to get a TM, They know it will be refused.
You've got a short descriptive, I doubt it can be trade marked. but they allowed the longer three word TM (two adjectives) through , happens all the time