Trademarked after I bought the domain what's up with that?

[Bedrock]

I registered 3dFaceMatch.com on August 24th, 2013 I checked for TMs with US office and Trademarkia at that time and even now no trademark is registered, but I read an article in early October about a company who is pioneering crowd surveillance software and they call it 3dFaceMatch with a tm symbol, my page is just parked at voodoo, am I in jeopardy of losing this domain?

 

[Chris Wright]

You could be in jeopardy.
There are 3 levels of trademark protection and only 1 is registered.
The first tier is widespread public usage, this is how celebrity names are protected.
But it also happens with famous companies and products.
The next tier is common law trademark, which happens when you put a TM symbol next to a mark that is neither generic, nor infringing upon any other trademark.
The top tier of protection is registered trademark, signified by the circle R.
This costs $1,000 and up, so many trademark holders don't bother.
From what I understand, owning the domain hasn't been upheld as prior usage, unless there was a business website site in place (not a redirects or parking page).
At this point, you could spend money getting an attorney to try to protect you.
Or you try to sell to this company for just under the filing fees that they would pay to pursue a UDRP hearing, which is $1,500.
The technology they peddle is big big money. They could pay you $1,495 without blinking.
Win - win!

 

[Weber]

First thing I would do is ask that this thread be moved to the private part of the legal section before discussing any further..

 

[Bedrock]

Sorry about posting it here please move this thread

Sorry about posting it here please move this thread

 

[alien51]

Given that you have the word "Face" in your domain, you could even get UDRPed by Facebook. Those guys have lawyer employees who do nothing in the office but look for something to sue.

 

[Chris Wright]

HaHaHa!!

...you could even get UDRPed by Facebook.

So if I sell face creams at FaceCream.com, I need to worry about Facebook?
Wow.

 

[GoKaizen]

I would unpark it immediately.

If a company went through the trouble for a TM, it's likely it could end-up not so good for you.

 

[alien51]

HaHaHa!!

So if I sell face creams at FaceCream.com, I need to worry about Facebook?
Wow.

I didn't say whether your facial cream is okay or not. But like usual, any domain that has some trademark in it, is "playing with fire" like what others are saying in the legal thread. Just run away to avoid thousands of dollars in lawyer costs. It doesn't matter whether you have trademark rights or not. You will just run out of money trying to figure that out in court.

Here's the link:
http://techcrunch.com/2010/11/23/patent-office-agrees-to-facebooks-face-trademark/

You can also search on Google with this: "facebook wants to trademark the word face"

And by the way, the domain mentioned in this thread "3DFaceMatch" is related to electronic/digital image transmission. This is much closer to the trademark issue for Facebook, compared to facial creams.

 

[damic25]

To the OP... check the USTPO for any trademarks about the name. I just did a search for both "3dfacematch" and "3d face match" - ZERO trademarks came up for either term.

However - it is also possible that "3d" is not part of any mark they may have.

There IS a current TM for "FaceMatch" in the system - which was originally filled on Jan 24, 2013 - and amended on Nov. 5, 2013. They also list a First Use in Commerce of Nov, 21 2012. If that is the same group - then yes, you could certainly face some issues. If it is not, then I would suggest getting a TM for "3dFaceMatch" which, if you can do it yourself, can be done around $300 (If you are wanting a US TM)

Even if that other live mark is them - you can still apply for "3dfacematch" as your own mark so long as you don't infringe on their mark/wording listed in their G&S (Goods and Services). But there is no guarantee that would be successful.

First and foremost at this point - be cautious about whatever you do. And of course, good luck!

 

[Chris Wright]

Alien, did you read the article you pointed me to?
Its quite clear what they want to do & it wouldn't change anything majorly.
They essentially have the same rights de facto.
Even without that extra registration, you couldn't get away with using the word "face" for chat or social networking.
They are merely codifying those limits for the benefit of the masses.

Trademarks are for the good of society and the individuals that abide by the laws of society.
Trademarks, like copyrights, are not random, mysterious, or scary.
They are logical, sensible, and GOOD.

 

[Weber]

Sorry about posting it here please move this thread

I thought the moderator for the different forums was listed somwhere. After a quick look, can't find it. Try the support desk/ask a moderator. Maybe you can get the thread moved through there. You want it in the private forum, so the rest of the discussion doesn't get indexed in the search engines.

 

[alien51]

DomainBizDev,

Are you a licensed and practicing Trademark lawyer?

 

[Chris Wright]

Are you?

 

[alien51]

I am not a lawyer. I am just expressing my views.

How about you?

 

[damic25]

Well... I for one know and have stated that I'm not a lawyer - but my father is and has been an acting one for a long time, and I have two trademarks myself for nearly 10 years. So, when I post about anything TM related, all I can offer is whatever experience I've had dealing with them.

 

[Name Trader]

Well now you know about the FaceMatch trademark you will not be able to infringe on that trademark, even if you registered the domain before the trademark.

 

[DU]

Are you in jeopardy of losing the domain?

Probably not.

Is your domain valuable?

Not in the slightest.

Can you sell the name for profit?

Maybe but it would be hindered by the fact that no viable business would want to compete with a registered TM on FaceMatch in that niche.

I would imagine this company would have somewhere between no and extremely small interest in ever owning this name.

This is drop fodder.

The top tier of protection is registered trademark, signified by the circle R.
This costs $1,000 and up, so many trademark holders don't bother.
From what I understand, owning the domain hasn't been upheld as prior usage, unless there was a business website site in place (not a redirects or parking page).

At this point, you could spend money getting an attorney to try to protect you.

What does owning the domain and prior usage have to do with anything? Why are we talking about what poor decisions some people make with TMs when the company in question has registered FaceMatch?

Are you suggesting, or trying to determined if the OP can actually claim legitimate prior usage to the domain? It's parked at Voodoo and I can be pretty certain there is no intention to use this name for anything but resale as it's posted under "Domain Newbies". The registration date was some 8 months after filing date anyway so it's a moot point.

I would hire a lawyer too. They would probably only charge you between 20x and 100x the value of your domain an hour.

Or you try to sell to this company for just under the filing fees that they would pay to pursue a UDRP hearing, which is $1,500.
The technology they peddle is big big money. They could pay you $1,495 without blinking.
Win - win!

Trademarks are for the good of society and the individuals that abide by the laws of society.
Trademarks, like copyrights, are not random, mysterious, or scary.
They are logical, sensible, and GOOD.

You state TMs are good - no doubt because they protect the holder from others taking advantage of their TM... but then you advocate selling a name that is benefiting from being a match to the TM? So they are good - but domain holders should still be able to jack up the price on domains to take advantage of them?

That seems anything but logical, sensible, and good.

If it is not, then I would suggest getting a TM for "3dFaceMatch" which, if you can do it yourself, can be done around $300 (If you are wanting a US TM)

Even if that other live mark is them - you can still apply for "3dfacematch" as your own mark so long as you don't infringe on their mark/wording listed in their G&S (Goods and Services). But there is no guarantee that would be successful.

First and foremost at this point - be cautious about whatever you do. And of course, good luck!

You can't just "get" a TM. You have to have a commercial basis for registering the mark (either existing or a bona fide intention).

If you can think of 3dFaceMatch being used in a manner not related to computer facial recognition I'd be surprised (though I'm surprised how narrow their product is defined).

DomainBizDev,
Are you a licensed and practicing Trademark lawyer?

You know, practising makes perfect.

Well... I for one know and have stated that I'm not a lawyer - but my father is and has been an acting one for a long time.

If your dad was a brain surgeon it wouldn't mean I'd let you have peak inside of my head.

 

[damic25]

You can't just "get" a TM. You have to have a commercial basis for registering the mark (either existing or a bona fide intention).

That is false.

If your dad was a brain surgeon it wouldn't mean I'd let you have peak inside of my head.

Well, you're a bucket of sunshine. And I wouldn't advise that anyway.

 

[DU]

That is false.

Perhaps you can explain how one gets a TM on goods/services by listing "nothing" as the goods/service you would be filing a TM for?

Or perhaps you could find a single source that shows this is possible?

Your application would read like what?

"I want to register 3d Face Match for a Trademark. I don't actually have a use for it. I don't have any service yet. I don't have any intent to use it right now - but I might in the future. To make sure that it is approved I can say that I won't infringe on similar TMs that exist and if other companies file an opposition you can promise them that I won't infringe on their rights either - I just don't know what I'm doing yet. Also, please don't allow others to try and register the same 3d Face Match for anything in case it ends up being the same thing that I end up wanting to do when I finally figure it out."

Well, you're a bucket of sunshine. And I wouldn't advise that anyway.

Not always, but I am sometimes. I wouldn't advise it either - looking in my brain that is.

 

[damic25]

Perhaps you can explain how one gets a TM on goods/services by listing "nothing" as the goods/service you would be filing a TM for?

Or perhaps you could find a single source that shows this is possible?

What I mean is that you can certainly get a TM with just an idea... you do not have to have a full blow product/service/site/business in place before trying to secure a TM, but you do need to know the specifics of the idea behind it - hence - goods and services listing.

Not always, but I am sometimes. I wouldn't advise it either - looking in my brain that is.

I understand. I am sometimes too. And that's ok, I don't advise anyone looking in my brain either as I'm sure it's not overly pretty.

However, there may be a few zombies out there that wouldn't really care and who would love to take an extended, in depth look at both of our brains.