Dominion.Domains

Trademark?

Discussion in 'Legal Discussion' started by Sinh, Oct 18, 2017.

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  1. Sinh

    Sinh Active Member VIP

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    I just bought a domain from Godaddy auction, this domain was registered before the trademark registered. Today the owner of the trademark emailed me and said that the domain is their trademark name anh wants to buy the domain with cheap price from me.

    Is this a trademark domain?
    What can I do now? Thank you.
     
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  2. jberryhill

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

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    If you "just bought" the domain name, then it would seem pretty obvious that the trademark was registered before you bought the domain name.
     
  3. peterparker

    peterparker Established Member

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    This information is so helpful to me
     
  4. Corey

    Corey Top Member VIP ★★★★★★★★★★

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    Trademark basics | USPTO

    Cheers
    Corey
     
  5. Irene123

    Irene123 Established Member

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    You have bought the domain with only name and not with trademark I can't understand the situation will you clear it first?
     
  6. Sinh

    Sinh Active Member VIP

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    I have sold this domain to the trademark owner since Tuesday, very good ROI, 600%
     
  7. Mark White

    Mark White Established Member

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    I just noticed one of my domain names pre-date a trademark by about five months. I'm thinking about sending them a email letting them know.
     
    Last edited: Jun 12, 2018
  8. Dominique

    Dominique Established Member

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    Why?
     
  9. Mark White

    Mark White Established Member

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    potential buyer
     
  10. Dominique

    Dominique Established Member

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    Just be aware that, in certain limited circumstances, "bad faith registration" can be found even if your domain was registered before the (complainant) acquired trademark rights.

    Trademark owner (complainant) maybe can prove your intent in registering the domain name was to unfairly capitalize on his trademark rights.
    The Panel can conclude that you registered your domain fully conscious of what business he could make out of it.
    Were you aware (or should have been aware) of the trademark owner and his reputation in his trademark at the time the domain name was registered?

    According to Wipo 3.0, such scenarios include registration of a domain name:
    (i) shortly before or after announcement of a corporate merger,
    (ii) further to the respondent’s insider knowledge (e.g., a former employee),
    (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or
    (iv) following the complainant’s filing of a trademark application.
     
    Last edited: Jun 12, 2018
  11. Mark White

    Mark White Established Member

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    It seems the trademark holder is in violation of wipo scenario (iii) "further to significant media attention.."

    This trademark holder filed his marks after I posted my name on social media, I'm not a lawyer, but I believe that constitutes "significant media attention."
    I'm not in any violations, as it's put in wipo scenarios..
    (i) through (iv)
     
    Last edited: Jun 12, 2018
  12. jberryhill

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

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    If you ever find yourself bored, you will find extensive discussions on the topic of "what are trademarks?" in this forum.

    Simply put, "when someone filed something" may, or may not, be significant. It can be an important clue depending on the type of filing it was (for example, a 1(b) or a 1(a) filing), but the upshot is this:

    HAVING A "TRADEMARK" AND REGISTERING A TRADEMARK ARE TWO DIFFERENT THINGS

    If, tomorrow, I start selling my own brand of dog food and call it "Doggie Domain Dog Food" then, assuming nobody else is using "DOGGIE DOMAIN" as a brand of dog food, and that "DOGGIE DOMAIN" thus distinctly identifies and distinguishes my dog food from other brands of dog food in the dog food aisle, then:

    I HAVE A TRADEMARK FOR DOG FOOD

    I don't have to file a paper in a government office somewhere in order to have trademark rights in the United States in the brand of dog food I'm selling.

    In fact, I might sell that dog food for YEARS before I think of filing for federal registration. There are lots of advantages to obtaining registration, but the main point is that, in the US and many other jurisdictions, you do not "get trademark rights" by registration. You "get" the rights by use as a trademark. You can get other advantages by "registering your trademark" - i.e. obtaining registration of the trademark you already have.

    Now, it may be a geographically limited mark. It may be a weak mark. It may be an obscure mark for which there wasn't any reason for anyone beyond a small market to be aware of it. But there is no question that I can stop someone else from ripping off that name and selling dog food in the market where I'm selling dog food.

    Again, it's not worth re-hashing the same thing over and over, but if there was one thing that I wish I could communicate successfully to domainers, as I have gone over at conferences, forums, etc.; it is that this fixation on registration formalities is the biggest single misconception that domainers can't seem to get past.

    What this means, in the present situation, is that there are significantly more facts needed in order to determine whether you might have a problem. Looking at filing and registration data can provide helpful information, but it is a starting point, not an endpoint.

    So? When did they start USING the mark, if at all.
     
  13. john888

    john888 Established Member

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    Thanks for the info. I have been watching a trademark application for keywords matching my dot com.

    2017-06-27 PUBLISHED FOR OPPOSITION
    2017-06-27 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
    2017-08-22 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
    2018-03-26 ABANDONMENT - NO USE STATEMENT FILED
    2018-03-26 ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED
     
  14. Mark White

    Mark White Established Member

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    Well , I noticed there are two different file numbers, each file is dated within four (4) days of each other, the first one seems to be a manufacturer, with No claims on exclusive rights, apart from their trademark.. I don't know if a wordmark is included in that statement, sounds like double talk to me.
    The second one (the one that was file later) has a service description that's very long, and is more in line with the name it self..IOM, but also has a "No claim was made for exclusive rights" on file.
    None have a first used in commerce date. Sorry for the delay, internet shutdown.
     
  15. jberryhill

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

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  16. Branko Jovanovic

    Branko Jovanovic Established Member

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    600% ROI from a domain name you just bought is good business.
     
  17. jberryhill

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

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    Okay, now, what might one do, other than looking at trademark application data, to figure out whether someone is using a trademark to brand their goods or services?
     
  18. Mark White

    Mark White Established Member

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    I usually hire an attorney, and let him handle things.
     
  19. Dominique

    Dominique Established Member

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    Google is the best way to find out whether someone is using a trademark to brand their goods or services.
    It requires some logic and basic knowledge about Google search engine functions.
    Search websites, company databases, press releases, social media and everything like that.

    For example: SPORTERING
    Google says: Nothing. Someone is using this term as a forum name, some misspelled words etc.
    I dont need to check database. Even if I find something there, there is a high possibility that certain trademark was abandoned long time ago through non-use.
    (One more thing: If you search for a particular term, use quotation marks around phrases to tell Google to match that word precisely.)
    sportering.com is available. You can register it if you want.

    Another example: SPORTEKI
    Google says: Sporteki.com is ranked on the first page.
    If you can understand French, you should read everything on this page, especially "about us".
    The next thing you can do is to check time filter. Type "sporteki", set the date filter to "Past Year" and see whats going on. I can see some relevant facebook page related to sporteki.com.
    I dont understand French, but Im already in doubt someone is using "sporteki" as a trademark.
    Than I check: http://www.wipo.int/branddb/en/ Brand status: Sporteki; Status: Active
    The term "sporteki" is distinctive and trademark is capable of distinguishing the goods and services from those of other traders. https://legalvision.com.au/what-makes-a-trademark-distinctive/
    Avoid.

    Third example: ATMOSPHERE
    Google says: So many things. This is a dictionary word, meaning "a layer or a set of layers of gases surrounding a planet or other material body".
    Wipo database says: Many active trademarks using the word: "atmosphere".
    Should I be worried? No. Should I check TM databases? No. Why? Because the term "atmosphere" is not associated with a particular good or service that comes from one manufacturer. As long as I dont use my domain (atmosphere.com) in a bad faith, Im not afraid.
    Register atmosphere.com if its possible.
     
    Last edited: Jun 13, 2018
  20. jberryhill

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

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    Well, that's sensible.

    There can be a lot of things in a trademark database record. As you point out, there are also some disclaimer issues, etc..

    But as far as an intent-to-use application goes (noted in the record as a 1(b) application and with no dates of use), sometimes clients want to get the application on file even if they've been using the mark for a long time, but the attorney doesn't have a specimen of use handy to file with the application. So, they'll file as a 1(b) and then amend it to allege prior use later on.

    So, once in a while, you'll see an "intent-to-use" application for a mark which the applicant has actually been using for a long time. Google is a good way to figure that out.

    As Dominique points out, if you want to find out if someone is actually using an alleged mark, then Google is a good way to go. Now, Google won't tell you if the mark is descriptive/generic or a lot of other things, but if you google, say, the proposed mark you are seeing in the application, along with the name of the applicant if there are a lot of search results, it can give you remarkable insight into whether or how long they may have been using the mark. Many companies will have an "about us" page that tells you how long they've been around, or an archive of news releases that will tell you when they launched a product, etc.. Another good resource are the various US state secretary offices that let you search corporate records, so you can find out when the company was formed, and there are various equivalents to those things in other jurisdictions like UK Companies House, etc.. Using the Google chrome browser, you can get at least automated translations of the pages you are looking at.

    Trademark office databases are a great resource, but they are only one limited tool in trying to get answers to questions that can be highly dependent on the specific facts at hand.
     
    Last edited: Jun 13, 2018
  21. jberryhill

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

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    Then again, "sporteki" appears to be the dictionary word for "sports" in Bulgarian, at least according to Google Translate. However, I've found that Google Translate has started including a "spell correction" feature which sometimes guesses at what the word might be, instead of giving you a direct translation when the word is not spelled correctly.

    Of course, in Bulgarian, they would write it as спортеки instead of "sporteki". So if you wanted to go for "it's Bulgarian for 'sports'" you would also want to explain that it is sometimes common to phonetically write cyrillic words in latin characters. Same goes for Greek, e.g.

    http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-2198

    The Respondent disputes the allegations of the Complainant. It points out that the word “kosmos” is a dictionary word meaning “cosmos” in many languages, and it is not exclusively associated with the Complainant. According to the Respondent, the Complainant has not proven that it had reputation at the time the Disputed Domain Name was registered, and has not established that the word “kosmos” should be regarded as exclusively or strongly associated with the Complainant in France.


    One thing about trademark registration systems is that while applications are examined in the US for distinctiveness, etc., many countries simply register what is filed, and have few bases for rejecting them. In those systems, the registration merely provides public notice that someone "claims" it as their mark, but do not carry a presumption it is valid. Unfortunately, that distinction among systems can get lost in the effort to come up with policies like the UDRP, which attempt to impose some measure of uniformity on top of legal systems which are themselves significantly different. France has very few restrictions on what can be registered as a mark.

    But your examples of the type of thought process one should apply are really, really great. Instead of going through this game of "I have a domain name which is kind of like (not really the domain name)", it might be a good idea to go through hypotheticals like the ones you posted, to flesh out the kinds of things one might look at in order to get a more comprehensive idea of what is going on.

    And, finally, on words like "ATMOSPHERE".... yes, it can be a mark for a lot of things for a lot of people in a lot of places. That's why, if you are parking the name, you want to use a parking system that allows you to categorically define what sorts of things show up on the page. If the parking links are things like weather, climate, etc., that's good. If the parking links are coming up with things like shoes, then that might be a warning sign that there's an "ATMOSPHERE" mark for shoes, and you want to fix that parking if you notice it.
     
    Last edited: Jun 13, 2018

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