Trademark vs domain name | Date in business vs registration date

[PROXUS]

trademark vs domain name | TM date in business vs domain registration date

I know that this topic was discussed many times but I can't find any details about specific of the issue. I have few questions regarding the process....


• My client has domain (lets say,.. just for example ->) ABCD.com registered in 2004
• Domain is active and used to sell products/services.
• Someone register trademark in 2008 with mark name ABCD stating that ABCD was first used in business in 2005 (year after domain ABCD.com was created)
• Trademark goods & services description is showing the same (same class) scope and character of services and products provided by ABCD.com

Now my questions are:
1. Does owner of trademark has any legal grounds to go after domain ABCD.com (knowing that his first date of use was year later that registration of ABCD.com) ?
2. Does owner of trademark ABCD can force owner of domain ABCD.com to stop selling products / services on ABCD.com (knowing that domain owner was selling those products/services year before trademark was registered)
3. Does legal owner of domain ABCD.com can apply for trademark ABCD.com ?
4. Can owner of domain ABCD.com file Opposition to trademark registration or Petition to Cancel, and what are the real chances of reversal or cancellation of ABCD trademark ?
5. Since trademark ABCD was registered with description showing the same type of services provided by ABCD.com, is there a chance to prove that trademark was registered in bad faith?
6. Assuming that in simple words trademark is like a permit for usage of certain name, and trademark ABCD is in conflict with ABCD.com domain which exist longer, what are the other options and actions that could be taken to protect ABCD.com or actions against ABCD trademark. ?


I'm interested in straight facts not assumptions. I will appreciate any advice especially from lawyers on this forum or people which have / had experience with such a process. Thank you for your help.

 

[flamewalker]

Now my questions are:
1. Does owner of trademark has any legal grounds to go after domain ABCD.com (knowing that his first date of use was year later that registration of ABCD.com) ?
2. Does owner of trademark ABCD can force owner of domain ABCD.com to stop selling products / services on ABCD.com (knowing that domain owner was selling those products/services year before trademark was registered)
3. Does legal owner of domain ABCD.com can apply for trademark ABCD.com ?
4. Can owner of domain ABCD.com file Opposition to trademark registration or Petition to Cancel, and what are the real chances of reversal or cancellation of ABCD trademark ?
5. Since trademark ABCD was registered with description showing the same type of services provided by ABCD.com, is there a chance to prove that trademark was registered in bad faith?
6. Assuming that in simple words trademark is like a permit for usage of certain name, and trademark ABCD is in conflict with ABCD.com domain which exist longer, what are the other options and actions that could be taken to protect ABCD.com or actions against ABCD trademark. ?

Someone will correct me if I am wrong, but:

1: Yes and no. Yes, because the domain is infringing on the trademark, but on the other hand, the domain owner technically has common law rights that preceed the registered mark. Is the mark actually registered or just published for opposition? It will be much harder to cancel a tm than to oppose it before its finalized.

2: Anything is possible... but I believe as long as the domain owner can show precedence (through archive.org or some other means), they should, in a perfect world, be able to rebuff and even counter sue the tm owner, since they really had common law tm rights before the tm owner (unless the tm owner can prove they actually started first even tho the first use date is one year later - don't know the ramifications of this situation).

3: Not unless they get the tm cancelled. It will be denied by the tm office otherwise.

4: Possible yes. Costly, yes. Sure thing? No. If they get a good lawyer and can develop a solid case, chances are decent imho except that if the tm is officially set... it will be tougher.

5: It's definitely possible. HOW possible of success... not sure.

6: Talk to a TM lawyer, but imho the only way the domain owner is going to get anywhere, they will need to get the tm cancelled, and sue the tm owner for infringement.

I'm no lawyer, but I have done a lot of research for this kind of thing. Good luck.

 

[labrocca]

You get an award for the most well worded question I have seen in Legal section.

I agree with Flamewalker for the most part.

 

[PROXUS]

Someone will correct me if I am wrong, but:

1: Is the mark actually registered or just published for opposition?

It is hard to say. Usually they are published for opposition few months or even a year after filing date. TM in question was filed last year.

current status of TM is:
Register PRINCIPAL
Live/Dead Indicator LIVE

What is even more interesting, current TAAR Status is showing: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.

From TDR paperwork I can assume that forwarded documentation wasn't complete and application is refused for now....

well it says exactly:

Refusal-Mark Merely Descriptive

Registration is refused because the proposed mark merely describes applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.



A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).



Applicant has applied to register the mark ABCD for “**description of the goods and services” “ABCD” is an acronym for “******” and a “*****” is “********************” Please see attached definitions. As evidenced by the specimen of record and enclosed Internet material, applicant’s software is a flash video player. Therefore, the mark describes the subject matter and/or feature of the software. Accordingly, the mark is refused registration under Trademark Act Section 2(e)(1).



Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

• Now the question is how long applicant has to reply with new evidence?
• IF TM is refused, how long it takes to show in TESS?
• Can my client / his lawyer, contact TM filing attorney directly to let him know that processed TM is in conflict with existing common rights od domain owner?

 

[flamewalker]

If they refused it based on it being descriptive, then chances are neither party will be able to tm it, and neither party will likely have any recourse through the courts or udrp.

You cannot TM Apple for selling apples... or Car for selling Cars.

 

[PROXUS]

so you say... that domains like MP3converter.com or SnowBlower.com (I'm referring to those 2 because construction of the domain in question is similar) cannot be TM'ed because it is not descriptive enough?


Also is that possible that TM indicator says LIVE while TM was refused?
Is it some kind of time frame / time limit for refreshing the status?

 

[PROXUS]

I'm digging deeper in the world of law :D so let me post my findings here and feel free to comment any of them.

The Trademark Manual of Examining Procedure states in part as follows:

1209.01 Distinctiveness/Descriptiveness Continuum

With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness -- or, on the other hand, descriptiveness -- of a designation can be determined only by considering it in relation to the specific goods or services. [emphasis added] Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods).

At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), “[t]he generic name of a thing is in fact the ultimate in descriptiveness.”

Fanciful, arbitrary and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the Principal Register without proof of acquired distinctiveness. See TMEP §1209.01(a).

Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under 15 U.S.C. §1052(f). See TMEP §1209.01(b) regarding merely descriptive marks, and TMEP §§1212 et seq. regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register. 15 U.S.C. §1091.

Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances. See TMEP §§1209.01(c) et seq.

and another one:

The Court discussed “descriptiveness” as follows:

A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. Nett Designs, 236 F.3d at 1341. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Id. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, "if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods [or services], then the mark is suggestive." Id. The most inherently distinctive marks are arbitrary; they do not even suggest any of the qualities or characteristics of the goods or services. ...more

....hmm... correct me if I'm wrong, but in that case, domains like MP3converter.com or SnowBlower.com (I'm referring to those 2 because construction of the domain in question is similar) cannot be TM'ed by anyone because they are not descriptive enough?

if you use combination of common words / acronyms and TLD like: kitchen+cleaner+.com or MRI+equipment+.com or CGI+graphic+.com then words used to build domain are merely descriptive and for ex. "CGI Graphics" cannot be TMed?

Just want to be sure, that I' understanding that correctly.

 

[jberryhill]

• Now the question is how long applicant has to reply with new evidence?

Six months from the date of the action. The applicant can reply with either a persuasive argument that the term is not descriptive in the strictest sense, or the applicant can present evidence and an oath that the term has acquired distinctiveness in the relevant market. Typically that requires a showing of five years of substantially exclusive and continuous use.

• IF TM is refused, how long it takes to show in TESS?

The application currently stands refused, so I'm not sure what you are driving at.

The sequence is non-final action, response, final action, and then either the examiner may on discretion accept an after-final action, otherwise the applicant may appeal to the Trademark Trial and Appeal Board. If refused at the TTAB, the applicant may appeal out of the USPTO and into the federal court system.

• Can my client / his lawyer, contact TM filing attorney directly to let him know that processed TM is in conflict with existing common rights od domain owner?

If their use is infringing your client's mark, then whether the junior party is seeking registration is entirely tangential to the fact that your client can put them on notice of infringement. I'm not sure I know what you are driving at here.

However, if the term is descriptive, then claiming a TM of your own is not necessarily the best move here.

I'll add that the initial fact pattern is nicely worded, but the fact that an issue that wasn't mentioned in the OP appears to be the more determinative issue is a prime example of why one shouldn't rely on "advice" given on the basis of hypotheticals like that one. If the TM applicant's use is descriptive, then so is your client's use, so we aren't looking at a priority issue at all, but a distinctiveness issue.

In general, no, if you've been using a term in commerce senior to another claimant, then you can oppose their federal registration. Further, their federal registration is not a bar to your continued use of your mark in a manner consistent with its use prior to their federal registration. A junior party's federal registration can essentially "lock in" a senior party, and prevent expansion of the senior party's use.

 

[PROXUS]

Thank you jberryhill for clarification.
Let me ask you few more questions if I can...


QUESTION 1:
Current TARR status shows:

A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.

...now assuming that applicant has 6 months to reply from the date of the action (which was August 2007) and now we have 7th month.... what happen next?

You wrote that sequence is like:
1. non-final action
2. response
3. final action
4. and then either the examiner may on discretion accept an after-final action

I assume applicant didn't responded, because there is no trace of reply in TDR. In this case, how long usually take to proceed with final action, and post the ruling in the system? I assume that his application status will show as abandoned or refused, am I correct?

QUESTION 2:
By your judgment, .....is it possible to trademark for example term "MRI Equipment", ...do you think it is descriptive term? I just want to get the feeling of descriptive vs. non descriptive terms, and this type of term is the closest to my client's mark.


QUESTION 3:

...if you've been using a term in commerce senior to another claimant, then you can oppose their federal registration. Further, their federal registration is not a bar to your continued use of your mark in a manner consistent with its use prior to their federal registration. A junior party's federal registration can essentially "lock in" a senior party, and prevent expansion of the senior party's use.

So pretty much, regardless of the fact if applicant will register this TM or not, my client will be able to keep his domain and provide usual services or selling goods, because he is a senior to potential claimant, am I correct?

thank you again for you detailed answers

 

[simon johnson]

Unless the people responding here are trademark lawyers, its kind of pointless having this debate. I'd recommend you get some solid legal advice and don't base your decisions on speculation posted in forums.

 

[PROXUS]

It is not really that pointless as you think. jberryhill (he is a lawyer) made some good points which gave me some hints where to look for even more detailed answers. I understand that replies in this forum will not replace legal consultation but at least it will arm my client and me with come additional knowledge that we can use, when talking with my client's attorney.