"Unregistered" tm question

[flamewalker]

I have gotten some opinions already... just not sure what legal grounding I may or may not have...

The scenario is this: I own thisnameinc.com. Thisname.com used to be used for a completely unrelated use. No biggie i figured... so I used thisnameinc.com and thisname as my site name and tm. Now, a year and a half later, I find that thisname.com is now being changed into a service that is identical to my own. Unfortunately my TM is not registered, but I have read that unregistered tm's can hold nearly as much legal weight as a registered one...

So my question is, since 'thisname.com' is now technically infringing on my tm (or are they?)... Do I have grounds to send a cease and desist, and/or file a UDRP? And... yes I am willing to file a UDRP if I have the legal footing to stand on.

Domain names can be made available upon request via pm.

Thanks in advance.

PS - Thisname.com uses This Name Inc at the bottom of their site.

 

[snowbird]

I am no lawyer but seeing that you registered your domain after them, they may have more footing on who has been in business longer regardless of what the business purpose was. Sending them a cease and desist will probably only attract attention. So if you do plan to do so, be prepaired to put on a fight and face the rough waters if nessisary. Someone else could probably give you more helpful advice since I am not really involved in the legal field. I am just basing this post on my own opinions here.

 

[Alan Glennon]

If you are claiming a trademark, you must actively work to protect it. I suggest you contact legal counsel.

 

[Ronald Regging]

I already know of which domains you are speaking. Honestly, I'd probably be angry as well, but anger doesn't always translate to legal justification

Given the scenario, I think you may certainly have claims to the domain, since they are essentially committing "bad faith" at this stage. My only concerns are the name itself (could be argued as generic) and whether you've established common law TM rights.

Even knowing the names, it's hard to comment, because of what I've stated above. My suggestion is to secure evidence of bad faith, meaning screenshots of previous usage, your previous and current usage, and their usage now... Setup a timeline of evidence so to speak. Then get some professional legal advice.

 

[Name Trader]

To follow RR's advice, www.archive.org is your friend.

 

[flamewalker]

yep their "new" stuff isn't even archive.org'ed yet. I have archive.org back almost a year and a half, showing the site in use for its current purposes. Also, does this matter whether I have a "business" set up or not?

 

[BitcoinDK]

Is there anything like a "unregistered" TM? is the point of TM not, that it is registered?

And what do you mean by "does this matter whether I have a "business" set up or not?", is the idea of TM not to protect the business you have, if you dont have a business, then how can you declare a TM?

Dont take this wrong way, Im just corious

 

[flamewalker]

Yes there is such a thing as an unregistered tm. I mean I never set up a business, like an llc, s-corp, or sole proprietor etc. I would be curious to know if you have to set up a business officially to declare a tm... registered or not.

 

[BitcoinDK]

I second your question

 

[Ronald Regging]

Yes there is such a thing as an unregistered tm. I mean I never set up a business, like an llc, s-corp, or sole proprietor etc. I would be curious to know if you have to set up a business officially to declare a tm... registered or not.

I don't think you technically have to, but I think it makes it a lot easier to defend...

Though, you may encounter some problems by claiming the Inc. part in your name... Inc. is a legal designation for corporations only

Really on this one, I think you're going to need legal advice. In the end though, if were able to get the name, even for the cost of UDRP + legal fees... I still think you'd be getting a good deal

 

[DNQuest.com]

Yes there is such a thing as an unregistered tm. I mean I never set up a business, like an llc, s-corp, or sole proprietor etc. I would be curious to know if you have to set up a business officially to declare a tm... registered or not.

You need a bona fide offering of goods and/or services in commerce to a point where the name/product gains secondary meaning.

 

[flamewalker]

You need a bona fide offering of goods and/or services in commerce to a point where the name/product gains secondary meaning.

Is there an easy way to determine if I have met that? The service is free at the moment...but I would think a 1+ year use would cause the name to be just that?

As far as being a bona fide offering... I don't see any reason it wouldn't be

 

[jberryhill]

The service is free at the moment

The "in commerce" requirement is not about what you are charging.

If you are in the relevant market, handing out stuff for free, you are engaging in commerce in the context of the Lanham Act.

 

[flamewalker]

Some one brought up an interesting view on this... perhaps they are trying to reverse-hijack my domain? IE build a site like mine then try to claim im infringing on their tm...If that is the case, would it be beneficial to make my tm legalized? I have all the evidence I need to prove 'first in use' date and when they changed their site et al.

Thanks again for the advice and clarifications. Currently phoning lawyers trying to get a feel for my legal grounding.