NamesCon2020

Trademarking Reviews?

Located in Legal Discussion started by stub, Jan 12, 2020.

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  1. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    the complaint was coming trough the registration office of course

    when you use trademarkia they act as your representative
     
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  2. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    I think I only need 1 domain sale on each domain to prove I have/am using my trademark commercially. I don't see that as a problem. Is it?
     
  3. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Ah.. OK :)
     
  4. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    you need to make use of the trademark
    in commerce
    in the way it is described in the trademark records


    - I'm no lawyer- no legal advice -
     
  5. mr-x

    mr-x Acme Domains - Times Person of the Year, 2006 Gold Account VIP ★★★★★★★★★★

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    Interesting read, Backcountry.com trying to have other trademarks cancelled, suing small businesses using the backcountry in combination.

    I thought this would be a week TM. Article says public opinion / backlash was significant and they stopped.
     
    Last edited: Jan 12, 2020
  6. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Do you have a link?
     
  7. mr-x

    mr-x Acme Domains - Times Person of the Year, 2006 Gold Account VIP ★★★★★★★★★★

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  8. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    This looks like something proposed by their lawyers, which probably sounded good at the time. Until the backlash. But it's true that my position with generic-like TM proposals, might put me at both ends of the spectrum. Like BackCountry, I might be in a position to go after other people trademarks, although I don't see any relevant TM's in my TESS Basic Text Search. Or I could be spotted by a Big Fish, who decided they wanted to go after my TM's because of their generic nature.

    But my main reason for seeking these TM's is primarily to set the groundwork for defending a UDRP from my domains being snatched from me. It's basically about protecting my domains from Reverse Domain Hijacking, not at all about the TM's.
     
    Last edited: Jan 13, 2020
  9. mr-x

    mr-x Acme Domains - Times Person of the Year, 2006 Gold Account VIP ★★★★★★★★★★

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    I think backcountry.com is an interesting outlier. Easy to get caught up in obscure details; I'd rather have a TM than not.
     
  10. DoNotTrackMyIP

    DoNotTrackMyIP Established Member

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    @stub Not a lawyer but from what I have discovered you can file your trademark with intent to use and string that along for at most three years. So you first file for the TM, about four-five months later it is opened for comment for 30 days, and then if no one complains you are granted the TM and then you file an intent to use ($150 USD each time) every 6 months or so for up to a 3 year period. Expect a lot more back and forth if you domain is not unique. However yes as a non-US citizen you HAVE to go through an attorney. Sorry I don't know of a good TM attorney (yet) and I cannot refer one to you.

    This post is not to be construed as legal advice.
     
  11. DoNotTrackMyIP

    DoNotTrackMyIP Established Member

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    If your horizon is to sell the domain in 3 years you technically don't have to do anything at all IF you file first with "intent to use" and string it along. If you have a longer horizon sell T-shirts off the domain with a TM'ed name or logo.

    PS I think for you TM can be $2-3k USD easy, more if there's back and forth with the USPO, plus the $150 USD every 6 months. Just be prepared to litigate I guess. Does anyone know if Rick Schwartz cool with helping with these sorts of URDP (URDP?) actions? He seems hellbent against this activity.
     
  12. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    It's not my intention to sell these domains. They are and will be my permanent domain names for transacting my business on the internet.
     
  13. DoNotTrackMyIP

    DoNotTrackMyIP Established Member

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    Oh let me retract my earlier comment, selling T-Shirts won't work because they'll be in a different class of what you're going to TM (unless you really do plan to sell T-Shirts).

    If this is a permanent business, you have to pick the class and do business in that class, and then send logos and samples to USPO for examination. Still won't change the fact that this could cost you mid to high $x,xxx to do it right, especially if you have multiple classes.

    How "sure" are you that you're vulnerable to UDRP? Are these $xx,xxxx-$xxx,xxx domains?
     
  14. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    OK to paragraphs 1&2. I think any desirable generic wording branded to a class would possibly be susceptible to RDH. Irrespective of their value. I could imagine, over time, that I could turn down $xx-xxxK for these domains, because the domains represent my business. But most things have a price of course. I probably wouldn't hesitate to accept high $xxxK today and rebrand :)
     
    Last edited: Jan 14, 2020
  15. hookbox

    hookbox Top Member VIP

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    This is true if you don't trademark the name including .com in the name. I think you become more protected across most of the categories when you include .com in the trademark. @jberryhill would know for certain.
     
  16. DoNotTrackMyIP

    DoNotTrackMyIP Established Member

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    Maybe the cheaper thing to do then is just pay for TM monitoring. That way if someone comes along and tries to TM it you can interject in that 30day period. Or you can probably just scrape USPO daily and setup an alert yourself.
    https://eog-tmng.uspto.gov/#issues=...20&orderBy=SERIAL_NR&view=review&subview=tile

    This only covers US, not sure about Madrid Protocol related-monitoring.

    Again, not legal advice.
     
    Last edited: Jan 14, 2020
  17. trelgor

    trelgor Established Member

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    Check out cpaglobal.com
     
  18. trelgor

    trelgor Established Member

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    About the TLD in the TM. https://abovethelaw.com/2019/11/dot...ns-and-testing-the-boundaries-of-genericness/

    I think, generally, courts don't give much credit to the extension. In essence they tend not to consider them. Maybe new case law is forming for nGTLD:s, I don't know. Same for UDRP:s. For figurative marks you can include the .com, sure. On the other hand, as noted above, including the extension (apparently) can make a generic term more trademarkable. (Booking.com). But that is a case of acquired distinctiveness, which has taken quite some marketing effort.

    I would try to protect the left of the dot. The protection scope gets more limited with TLD details in there. Which Trademark+TLD would a court side with? Does a TLD add or retract anything in fact?
     
    Last edited: Jan 14, 2020
  19. ThatNameGuy

    ThatNameGuy Restricted (33% DM) Gold Account

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    Stub...i've trademarked three names that I happen to own domains for, and I go through Legal Zoom. They're not the cheapest, but like Go Daddy and IBM, they're recognized by "end user's" The process generally takes from 6-9 months assuming no hiccups and cost from $300 to $500. I don't bother with other countries for good reason. A trademark lawyer like the one who hangs out on NP will charge you $1,000 to $2,000 for what you can do for $500 or less. Good Luck!
     
  20. tonyk2000

    tonyk2000 Top Member VIP ★★★★★★★★★★

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    Initially I though you were looking for some bulk TM protection of forsale or at least undeveloped domains. However, in this case and since the intention is to prevent UDRP / RDNH, it should probably be enough to a) register a TM in a jurisdiction where the business is incorporated (or where you personally is located if not incorporated). b) Add "DBA /doing business as/ yourdomain .com" into the company incorporation documents or tax registration certificate, or maybe to any official registration(s) you have or may obtain as a natural person, if the jurisdiction you are operating from so allows.
    The second part should allow to include "I am KNOWN as thisdomain .com" statement in your (potential) UDRP response, providing the proof if necessary (official docs from your country).
    As per UDRP overview from WIPO:
    To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:
    ...
    (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights;
     
    Last edited: Jan 15, 2020
  21. Corey

    Corey Corey.net.au VIP ★★★★★★★★★★

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  22. trelgor

    trelgor Established Member

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    I don’t think the Supreme Court will side with booking.com though. https://www.mediapost.com/publicati...com-trademark-would-harm-competition-eff.html
     
  23. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    So in my case, with 2 domains, can I add doing business as domain1 and domain2 to the incorporation documents, or possibly even develop (not yet developed) my "incorporatedname.com" which is doing business as domain1 and domain2, say on a 1 page landing page. Would that help?
     
  24. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    both cpaglobal.com and cpa.global don't resolve for me?
     
  25. tonyk2000

    tonyk2000 Top Member VIP ★★★★★★★★★★

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    Two domains - should be possible to add both as DBA, with "and", why not... if this DBA thing is acceptable in your country (not necessary by companies registration authority, it may also be taxpayer registration certificate, city or town permission to operate, or anything "official"). And, if there are 2 different websites or landing pages - you can also add a footer with "(C) Your company name", and some text like "thisdomain.com (R) is a registered trademark of <company name here>, proudly registered in <country name>". By (C) and (R) I mean "copyright" and "registered trademark" symbols (unsure how to post those in a forum). Or, if you claim unregistered trademark - remove (R) and "registered". Simly "thisdomain.com is trademark of <..>", without (R), would imply that you think it is a trademark, but not officially registered yet.
     
    Last edited: Jan 16, 2020

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