What if a Trademark filed after name regged?

[markfromslo]

I've got a name for sale that I bought last year, and prior to that it was parked by someone else. I noticed that someone just filed a trademark for the same name a few weeks ago. I checked with the company site of the trademark applicant and there is no reference to the wording anywhere, so they have not begun commerce with it yet as far as I can tell--not even announced anything.

Given this, I'm in good shape since I regged it way before the name was in use or trademarked, correct?

 

[labrocca]

Well the application should show it's usage. That's really key to any TM case. When is the application claiming first use?

 

[markfromslo]

That was a good question. It was filed as a "1B: Intent to use as of the filing date" and the filing date was just a few weeks ago.

So, no way that trumps my buying the name when it was available last year

Well the application should show it's usage. That's really key to any TM case. When is the application claiming first use?

 

[kevuk2k]

I've got a name for sale that I bought last year, and prior to that it was parked by someone else. I noticed that someone just filed a trademark for the same name a few weeks ago. I checked with the company site of the trademark applicant and there is no reference to the wording anywhere, so they have not begun commerce with it yet as far as I can tell--not even announced anything.

Given this, I'm in good shape since I regged it way before the name was in use or trademarked, correct?

Providing that the filer of the trademark can prove that they have been trading either on or offline with the said name for a period of time, about 2 years, then they can claim what is deemed to be a 'common law' right to the name. Anyone can apply for a trademark and you have to wait for it to go through the due process whether you like it or not, the plain factor here is that they are attempting to trademark a name that you by look the looks of it have prior rights. You can object to the application via the online site of the country the trademark has been applied for, there are usually clear instructions on how to do this and it really is quite simple.

Without going into any detail, I can't I don't know the name you are concerned with but if you want to pm me then I will certainly help you if you need it. I've been through a huge trademark case myself in the High Courts in London and won, so I kind of know the process you have to follow and how to defend etc.

I'm here if you need me.

Kev

 

[labrocca]

Kev...you need to read what he said before you posted. The TM filing stated:

1B: Intent to use as of the filing date

Which means that OP's domain shouldn't be a TM violation and if there is a TM violation it's actually the person attempting to register the mark of the domain holder. That's IF the domain holder usage is the same as the TM's filing which is doubtful.

 

[kevuk2k]

Kev...you need to read what he said before you posted. The TM filing stated:



Which means that OP's domain shouldn't be a TM violation and if there is a TM violation it's actually the person attempting to register the mark of the domain holder. That's IF the domain holder usage is the same as the TM's filing which is doubtful.

Got my glasses on now, thanks, missed that. Yes you are correct on that and there's nothing more to add In fact, the domain name holder has more right if there is any common law mark there, but as the domain appeared to have been parked I doubt this.

Thanks for bringing me to book though.

Kev

 

[markfromslo]

Got my glasses on now, thanks, missed that. Yes you are correct on that and there's nothing more to add In fact, the domain name holder has more right if there is any common law mark there, but as the domain appeared to have been parked I doubt this.

Thanks for bringing me to book though.

Kev

So, if I am just parking the name, I most likely don't have rights to file opposition against the tm application? The parked page is showing ads for products in the same industry as the tm's usage as described in the application.

 

[kevuk2k]

So, if I am just parking the name, I most likely don't have rights to file opposition against the tm application? The parked page is showing ads for products in the same industry as the tm's usage as described in the application.

If that is the case you are running a fine line at calling it parked. Its irrelevant as to whether you are gaining from these ads or not, you are allowing the association between name and its use in conjunction with related ads. I'd watch your back for a bad faith regisration claim here! It isn't cheap to register a name or mark so if these people are prepared to do that they may be prepared to present a case of bad faith registration which these days doesn't have to be done online.

Whether or not they have a chance in hell of winning you would still have to defend any application they make which will cost a fair amount. Get off the whois register is my tip of the day!

Kev

JUst an opinion and unlikely to happen so no panick stations, but if I wanted a name bad enough I'd take you to Court for it without blinking.

 

[labrocca]

I am not sure but I think you can refute the registered mark and since it's in the same field as your usage you may want to do that. The reason they are registering the mark is unknown but they may want your domain. If they get this mark actually registered it will carry some weight with WIPO. Also if they are throwing money at the registration of the mark they may have intention of either making you an offer or trying a reverse hijack.

You should begin your battle now. Defending a WIPO can be more costly than refuting a TM.

It's called an "Opposition".

http://www.uspto.gov/web/forms/oppositionformat.pdf

That's the format form. Consider getting that started.

 

[markfromslo]

But accordingly then, EVERY parked domain that was purchased before any trademark was filed or the name was used in trade is then owned in bad faith. You could just pick a parked domain you want, apply for a trademark for said name, and then cry bad faith. Doesn't make sense.

If that is the case you are running a fine line at calling it parked. Its irrelevant as to whether you are gaining from these ads or not, you are allowing the association between name and its use in conjunction with related ads. I'd watch your back for a bad faith regisration claim here! It isn't cheap to register a name or mark so if these people are prepared to do that they may be prepared to present a case of bad faith registration which these days doesn't have to be done online.

Whether or not they have a chance in hell of winning you would still have to defend any application they make which will cost a fair amount. Get off the whois register is my tip of the day!

Kev

JUst an opinion and unlikely to happen so no panick stations, but if I wanted a name bad enough I'd take you to Court for it without blinking.

Thank you. But drawing the same conclusion as my last post, if you say that it "could carry some weight" if they get it trademarked, could not then anyone just trademark any existing parked domain they wish to obtain and then go claim it should be theirs?

I am not sure but I think you can refute the registered mark and since it's in the same field as your usage you may want to do that. The reason they are registering the mark is unknown but they may want your domain. If they get this mark actually registered it will carry some weight with WIPO. Also if they are throwing money at the registration of the mark they may have intention of either making you an offer or trying a reverse hijack.

You should begin your battle now. Defending a WIPO can be more costly than refuting a TM.

It's called an "Opposition".

http://www.uspto.gov/web/forms/oppositionformat.pdf

That's the format form. Consider getting that started.

 

[labrocca]

Anyone can make any claim...that doesn't mean they will win. Many people can't afford to even defend a WIPO. I am just saying the motives from this company are unclear. We don't know the name of the domain so I can't look into the company background. However I would be suspect of their motives and do everything I can to ensure my mark on the name.

 

[kevuk2k]

Anyone can make any claim...that doesn't mean they will win. Many people can't afford to even defend a WIPO. I am just saying the motives from this company are unclear. We don't know the name of the domain so I can't look into the company background. However I would be suspect of their motives and do everything I can to ensure my mark on the name.

I can tell you from experience that it is not hard to defend a WIPO. I know I did it! Reverse domain name hi-jacking is a crime as equal as bad faith registration. I'm not proud of buying domain names in the early years for profit but as I became a business I realized that there is always two sides to the story. WIPO think they are the be all and end all of things and if you lose as the little man often does simply enter an application in the County Court for the offence of RDH, the culprit will very often realize that a Court is not as narrow minded as the supposed 'independant panelists' and will settle the matter out of Court rather than risk having a Judgement go against them.

The Courts go by the rule of property by possession is 9 tenths of the law unlike WIPO etc who go by some wierd premise that they have the right to play GOD!

To the one who owns control of the name the power belongs, it is for the other to prove the three premises of bad faith registration, and that ain't easy!

As it is a legal issue I won't comment further on open forum but if anyone wants to get some help pm me.

Kev

 

[bluesman]

Reverse domain name hi-jacking is a crime as equal as bad faith registration. I'm not proud of buying domain names in the early years for profit but as I became a business I realized that there is always two sides to the story...

...The Courts go by the rule of property by possession is 9 tenths of the law unlike WIPO etc who go by some wierd premise that they have the right to play GOD!

To the one who owns control of the name the power belongs, it is for the other to prove the three premises of bad faith registration, and that ain't easy!

Exactly right. Also right is slobizman, who said: "But accordingly then, EVERY parked domain that was purchased before any trademark was filed or the name was used in trade is then owned in bad faith. You could just pick a parked domain you want, apply for a trademark for said name, and then cry bad faith. Doesn't make sense."

As I'm always saying, just because something is parked on godaddy with a couple of generic related ads (which THEY put on it) that domainers can't make a dime from, that's a very far cry from a full-on Sedo monster, with ads that you pick and DO make money on.

But why choose between the lesser of two evils regarding parked pages? You can easily sidestep that angle by putting up a quick one-pager site, with a simple sign saying "Under Construction." That way you're not parked, yet you're proving you're not making money on it. Problem solved.

But the bottom line here would have to be that if the ridiculous inference being made by companies and celebrities recently - that "all trademark names also equal corresponding domain names" - there'd NEVER be any such thing as a non-generic domain being owned by a private party.

They'd all automatically be put in the hands of big business and big celebs at the same time as their trademarks, copyrights, etc., are granted to them!