Im researching these areas on trademarking a club's website that i started long ago, but someone registered are same name, just under .net and is doing the same thing as .com. Anyway, I know they dont have a trademark, their to new, and we dont either but, IF we trademark .com site we could legally shut down .net correct?

It depends...but you do have a better shot at it if you own the trademark (note it can take a year or more to obtain the trademark)

Thinking that it might be better. For a few months, its become a soap opera, but its becoming personal, and physical, and I dont want anyone to get involved really cept its admins. For months I contimplated on filing a lawsuit or slander case against them but found that it would be a long and tedious process. Figure if I can get to the trademark portion before they do... well, I could just have them shut down then... :dunno: Theres so many contraversies that surround the net

I doubt you could 'get them shut down' or take their domain name if they have been doing business under the business name you seek to trademark prior to the trademark being established.

Beware of hiring a lawyer too soon. I'm sure some would be more than happy to take your money and pursue litigation since they will get paid whether you win or lose. Remember... just because an attorney says you have a case doesn't necessarily mean you automatically win.

Several years back I was running a company and had used the same name for over 4 years. Another company came along and registered the trademark under a category which also covered mine. They sent me several "cease and desist" notices (which I ignored) and finally took me to court. They lost because I could show prior use of the name.

.com
Created on: 08-NOV-01
Expires on: 08-NOV-02

.net
Created on..............: Sun, Nov 04, 2001
Expires on..............: Tue, Nov 04, 2003

It was registered a few days later.

What happened was the guy who bought the .net domain was banned from .com around late december into january of 2001, he then later started up his own club on .net which is a representation of .com just different looking but its the same as far as "what its all about" The actual owner of the club, he reliquished his name and rights to .com, but didnt give him permission to register .net, he just did it anyway and nothing more was said.

.net does make money. They sell off email accounts, and have several sponsors in which they charge 150-300 a year. Some people were banned from .net and after they paid for email accounts, they took them to small claims court, and got their accounts back or money refunded. .com does not do this, it does not make any profit at all.

I have yet to speak to a lawyer about incorperating or trademarking. Only thing Ive done is talk to one about filing a lawsuit against .net for slander and defamation but it would of been a money hog. There are to many laws surrounding it so I never persued it. If they wanted to start their own thing, they should DO their own thing and not steal someone elses idea, IMHO

Typically you can trademark your name if it is not descriptive - it's practically impossible to get a trademark if the name describes what you do.

For example - Yahoo or Ebay are highly trademarkable because they are made up words.

If Ebay had called their site www.wedoauctions.com then it would not be applicable for a trademark because the name describes the service.

Even without actually having the trademark officially if you have a trademarkable name and have been using it then you can still be covered under trademark laws, although this typically relates to a local area of coverage. This is a bit fuzzy with the net because the area of coverage is global.

Typically getting a good lawyer to do trademark work - including all the right searches & filing - will cost between $3000 - $5000 and around 1 year.

As joshp pointed out, being the first to register a trademark isn't everything. For one thing, in a way trademark is like copyright -- it exists as soon as you use it, registering is just a way of formalizing it and creating an official record of the protection of your mark. But as part of the process anyone else has the opportunity to oppose your registration and show that they have right to the mark, or that you do not. One important issue is that of "prior use."

IF we trademark .com site we could legally shut down .net correct?To be accurate, you can't trademark a website, and you can't trademark a domain name -- but if the domain name is the name under which you do business, you can trademark that name.

For example, if you sell sandwiches as "The Sandwich King" and operate a website at eatasandwich.com, you can trademark the business name, but not the domain name. But if you are selling sandwiches instead using the business name "EatASandwich.com," then you trademark that as a business name.

But, again... trademark might not even be your best approach. While it's not clear from your explanation of the history above, if the .com was registered and operational first, depending on how "generic" the name is, it's possible you'd have a case in a UDRP domain name dispute that the .net name was registered in "bad faith" to steal business or visitors from the .com. You'd also have to prove that "they" have no right to or legitimate interest in the root name, and that you do.

A trademark registered after the domain names were registered will be of little significance in a UDRP dispute anyway. More significant will be the usage of the word, and the club names, prior to registration.

For one thing, in a way trademark is like copyright -- it exists as soon as you use it

This is true to an extent - but the law only gives trademark protection to non-registered trademarks that are used day to day within a local area. Outside of a local area you have no trademark protection unless you actually register it. The web is a bit different because the area is not local, so I would assume that you had no trademark protection by use unless it was registered.

Originally posted by JayC


But, again... trademark might not even be your best approach. While it's not clear from your explanation of the history above, if the .com was registered and operational first, depending on how "generic" the name is, it's possible you'd have a case in a UDRP domain name dispute that the .net name was registered in "bad faith" to steal business or visitors from the .com. You'd also have to prove that "they" have no right to or legitimate interest in the root name, and that you do.

A trademark registered after the domain names were registered will be of little significance in a UDRP dispute anyway. More significant will be the usage of the word, and the club names, prior to registration.

Steal in bad faith pretty much hit the mark. I know they revolved around politics saying they are better, emailing our members asking them to come to their side, and buying their loyality off, kind of like a radio station saying listen for the touch tones and call in you could win 1000 dollars or something. Its agravating to me really. like a competition ring or something

I appreciate your' all's comments. :) its helped somewhat!