First off, I should by all rights take this to a lawyer and pay for this advice, but I can't afford to right now. This is just an informational study of sorts... heh
I have a small computer repair and webhosting business local to my small town. I registered a few domains that have to do with hosting or computer repair - one way or another.
Seems that a larger local company that does some of the same things as me has trademarked one of the domain names. Well, they applied for it anyways. They did attempt to purchase the name from me to which I turned down given that I thought the name had potential.
Seems shortly after I turned them down they applied for a trademark on the name, they also purchased the .biz and .info for the domain. But who cares about those.
That was in March, found out about it recently by doing random USPTO searches. Status says the following:
Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.
2002-07-09 - Non-final action mailed
2002-06-20 - Case file assigned to examining attorney
Filing Date: 2002-03-04
Anyways, anyone have an idea what I should do? I am not terribly attached to the domains, so if it looks like it's something I will inevitably have to give to him due to trademark infringement, I would like to know sooner than later.
Oddly enough, it says this for State or Country of Incorporation: EPO (European Patent Organization)
We are in Wisconsin, USA.
What is your take on the matter? Is it something that would cost too much to bother with?
If they received an initial refusal it's probably because they attempted to register as a trademark the "domain.com"
This is a common mistake and it almost always fails.
You can contest a trademark prior to its registration via a lawyer, stating that it dilutes your own mark, based upon 'prior use'. As long as you used the mark to engage actively in interstate commerce.
You should also visit the US Patent and Trademark site - there's lots of informatoin there. You can also do a Google search on this issue and you'll find lots of related information on cybersquatting, etc. But it doesn't seem that you have an issue here in as much as they do. Your only potential issue is that they have more financial muscle than you do, and we all know that it's the money that wins most of these battles, unfortunately. So, your best bet is to educate yourself as much as possible. Keep good records/documentation on everything you've done, and keep a copy of their prior inquiry on your domain name.
And yes, petition against the name they are trying to trademark.
The key with domains is that if a person comes along and says they have trademark rights don't offer them money or approach them for money or else you loose out. If you have a domain and are using it for another valid purpose and not just squatting then they can't do jack about it. It's all about your intentions and what your actions are. There are common law trademarks also. I wouldn't worry about anything since you registered the domain well before they applied for the trademark in fact you could even get theirs revoked since you in essence could prove you held a common law trademark well before they applied for one. There is a lot to this issue. Check your local library for books. I found like 4 different ones that I read through. But best of all check out the link above.
one would think that the registration of the trademark after the registration of your domain name would not carry very much weight on its own. However there are lots of other factors which may go for or against your case.
Originally posted by WildCard First off, I should by all rights take this to a lawyer and pay for this advice,
Yes, you should -- at least if you value the notion of actually coming out ahead in some way regarding this matter.
Originally posted by WildCard but I can't afford to right now.
Then expect to get precisely what you pay for and not one thing more.
Except for general recommendations that you go to places like the USPTO web site and generally educate yourself (which can never hurt), you were told one thing in this thread that you should actually heed, and that's when timechange wrote:
"Best piece of advice: get a lawyer."
Or at least a consultant who specializes in matters such as this.
But whatever you do, do not presume anything other than the words you're reading right now to be reliable and/or relevant to your particular situation.
In this thread, you've been told you have nothing to worry about. Well, that's just categorically untrue. It has also been stated, and I quote, "its not like if i see a domain i want, i can go apply for a trademark and then its legally mine."
Well, actually, it is precisely like that -- or at least it can be, depending on the situation.
Do not read anything into a "Non-final action mailed" status. There are literally hundreds or even thousands of reasons for that status -- not a one of them involving an initial refusal or anything that could bode well for your situation.
You've been told that it's a common mistake -- and that doing so won't work -- to register a domain name as a trademark. That's just silly. It can be and has been done -- and will be done again... and again and again and again. There's just no validity to that comment.
Armchair "experts" are throwing around like water some unbelievably complex legal concepts like "dilution" of your own common law mark, and "prior use" and "interstate commerce." Aye chiuaua! These are, without a doubt, some of trademark law's most difficult areas being casually discussed here -- and advice being given -- as if it were no big deal. Don't believe a word of any of it as applies to your specific situation.Notoneword!
It's been suggested that if you go lookup WIPO decisions it will all somehow become clear. But good luck truly understanding the rationale for most of them -- and, moreover, how any of them applies to your situation -- without some kind of fundamental trademark law background. WIPO decisions and trademark law are two completely different areas, and neither of them particularly easy to wrap one's mind around.
You've been told what people can and can't "do jack" about; about "cybersquatting" and "intentions" and "valid puposes" and the relevancy and import of when your domain name was registered versus when the trademark is registered. Poppycock!
At least hostjet didn't steer you wrong with "one would think that the registration of the trademark after the registration of your domain name would not carry very much weight on its own. However there are lots of other factors which may go for or against your case."
Now there's an understatement -- a little like saying hell's kinda' warm.
Though the whole situation may or may not ever actually become a problem for you, you must understand that you are, by no stretch of the imagination, in the clear, WildCard. And this thread is -- ne, these forums are -- by no means the place to get an education regarding such matters.
Get some professional help, Wildcard. Please. If it's that important to you, figure out a way to afford good, professional help and then seek it. And once obtained, don't ignore it or challenge it with wacky things you read in places like this.
And... everybody... please... be careful about the advice you give in situations like this. I realize everyone who posted here had good intentions. But when you mislead someone about something as potentially important as this -- even inadvertently -- you're being grossly irresponsible. And from what I know of most of the people who've posted in this thread, they are not irresponsible and would never mean to mislead or hurt anyone. I understand that. These are good people who have posted here and they were only trying to help. But without meaning to, their well-intended advice could have been very, very harmful.
You know why we have lawyers to begin with? Because we declare to the state the we are basically "mentally incompetent" to represent ourselves. I think it's pretty sad people always say "get a lawyer".....more like get an education for yourself!
I hate slimey lawyers, they are the root of all EVIL! Best of luck, Wildcard. I hope it can be rectified without a lawyer. But if you must, watch out for the $450 bill for just looking at your case(funny, I think not, true story) for just consulting you on the matter, then another $700 for them to just send a half filled page to the opposing attorney.
I was onced served papers for breach of contract by some big money crooks trying to get over on me. It cost me $500 in consulting fees just for him to tell me he couldn't take the case. When I found a lawyer who could he tried to charge the new lawyer a transfer fee(un believable) and on top of that the new lawyer charged me a grand to send a letter to the opposing lawyer. All that money spent within the span of 6 hrs and I was the VICTIM!
Ha! That's nothing.
I had a dentist a couple of years back that would charge and itemize cost DURING the procedure! He would be in the middle of a filling or root canal and he would be like "Now, you understand this will cost $XXX more" etc etc.