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  1. #1
    Join Date
    May 2001
    Location
    South Africa
    Posts
    174

    Trademarking of generic names such as 24.com

    I'm in a peculiar situation right now, but my gut feeling tells me that there is nothing to worry about. Here goes ...

    I've registered ******.com early in 1999, and have been using it actively ever since. A large corporate company (very large, actually) in South Africa registered 24.com late in 2000, and they've also tried to trademark said domain (24.com). However, it appears as if their attempt to register it with the U.S. Patent and Trademark Office failed:
    http://tarr.uspto.gov/servlet/tarr?r...entry=75877429

    I'm not surprised, since 24 is a very generic term, don't you think?

    Ok, here comes the scary part. I've received a letter from them yesterday, asking me to either delete the domains ******.com and ******.co.za, or transfer it to them, since I'm infringing their "trademarked" 24.com! They haven't supplied any trademark references, but I'm sure they've managed to secure the local (South African) trademark. They also claim that 24.com is well known, and is being used extensively on on of their domains, http://mweb.co.za. Not true, a search on Google for 24.com merely returns one link to the url 24.com, and that redirects to the MWeb site. I could not find any usage of 24.com on the MWeb site.

    Now, MWeb is one of the largest ISP's in South Africa, and they are the people that requested the corporate legal guys to get on my case.

    Ok, my argument is basically as follows:

    - I registered ******.com long before they got 24.com

    - 24.com is so generic that they will have to approach each and every domain ending in 24.com (and believe me, there are many).

    - ******.co.za has nothing to do with 24.com.

    What are your views on this?

    thanks,

    Johan

  2. #2
    See an attorney.
    Richard
    Multiple Domain Hosting | See our Ad in PC Magazine
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  3. #3
    Join Date
    Oct 2002
    Location
    Maryland
    Posts
    127
    You're safe.

    I am under the impression your's mean "Hosting 24/7" or something similar.

    Their 24 could mean anything -- 24 morons, 24 dozen, 24 dollars. Theirs is too generic. Now if they had a trademark on "Hosting24.com" there may be some issues.
    Jesse Barron
    jesse@epitomized.com
    Epitomized Hosting: Exceeding Your Expectations
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  4. #4
    Join Date
    May 2001
    Location
    South Africa
    Posts
    174
    Originally posted by beachtrader
    See an attorney.
    I'm planning to do just that.

    According to the letter I've received they only have a trademark on 24.com (in South Africa, the USA refused it).

  5. #5
    afriq,

    take a look at the 4 requirements to have the domain allocation disputed. among them is the bad faith principle - you must have registered the domain specifically to either extort money or damage their reputation or something in that vein. on top of that, nowehere in the goods they listed in their application do they mention hosting or any similar services. in fact, had they been successful in registering 24.com with the uspto, you could probably still trademark ******.com with a different list of goods in a different international class.

    good luck,
    paul
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  6. #6
    Join Date
    May 2002
    Location
    Portland, Oregon
    Posts
    19
    You are somewhat safe. You appear to be the first to have used the service mark of ******.com. As long as you can provide some documentation on when the service mark was first used in commerce, then you will be fine. You don't need to register a trademark or service mark with the USPTO unless you plan on defending it in court.

    One area where a lot of people get in trouble is when they think they're generic name is available for use but it actually isn't. If the name in question is generic and a large well known corporate entity lays claim to it, you might be in trouble. They could argue that your use of their trademark or service mark is confusing to customers and therefore should be terminated.

    A lot of companies use this clause of the trademark statue to prevent a lot of squatters, anti-corporate sites, blah, blah, blah.

    But as was previously stated, your best bet is to seek an attorney, or try posting your letter to Chilling Effects, they provide an unbiased interpretation of the letter and how it pertains to the law.

    Good luck.

  7. #7
    point being, it is not cost-effective for them to take you to court. call up your local patent attorney for a quote and you will see why =]
    * Rusko Enterprises LLC - Upgrade to 100% uptime today!
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  8. #8
    Join Date
    May 2001
    Location
    South Africa
    Posts
    174
    Originally posted by gnuguy
    You are somewhat safe. You appear to be the first to have used the service mark of ******.com. As long as you can provide some documentation on when the service mark was first used in commerce, then you will be fine.

    One area where a lot of people get in trouble is when they think they're generic name is available for use but it actually isn't. If the name in question is generic and a large well known corporate entity lays claim to it, you might be in trouble. They could argue that your use of their trademark or service mark is confusing to customers and therefore should be terminated.

    But as was previously stated, your best bet is to seek an attorney, or try posting your letter to Chilling Effects, they provide an unbiased interpretation of the letter and how it pertains to the law.

    Good luck.
    Thanks for this.

    Ok, I won't have any difficulty to proof that I've used the domain commercially. Their argument is that my usage is going to confuse their own clients, as you've stated.

    The letter will be posted to Chilling Effects later today, after I've scanned it!

  9. #9
    Join Date
    Nov 2000
    Location
    San Diego
    Posts
    3,407
    I've received a letter from them yesterday
    How did you get this? Did you have to sign for it? If it was regular mail, then don't worry about. You never got it - get it? Then now that you know they may try to send the Cease and Desist certified, just deny receipt if it is from South Africa. Force them to spend more money trying to reach you.

    Anyone that tries to bully smaller guys deserves it.

  10. #10
    Join Date
    May 2001
    Location
    South Africa
    Posts
    174
    Originally posted by UmBillyCord


    How did you get this? Did you have to sign for it? If it was regular mail, then don't worry about. You never got it - get it? Then now that you know they may try to send the Cease and Desist certified, just deny receipt if it is from South Africa. Force them to spend more money trying to reach you.

    Anyone that tries to bully smaller guys deserves it.
    No, it is actually a lot simpler that that ...

    I'm also staying in South Africa, and they simply delivered to my house. I'm not too concerned about receiving the letter, but I'm going to give them a run for their money! And they will have egg all over their faces once this is over!!

  11. #11
    My question is why did they wait almost 2 years to file this "suit" against you...that would be one of my questions. If they were so concerned about it, why didn't they persue it within 6 months or so.

    Just my opinion

    Tom
    DWS CENTER LTDA--http://www.dwscenter.com
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  12. #12
    Join Date
    Aug 2002
    Location
    Global
    Posts
    9
    Oh this is to easy

    About a year or two ago Mweb made a portal 24.com. This is also under www.news24.com as thier news portal. In order to get a hosting portal they want to sell web space under www.******.com and www.******.co.za . As easy as that. Simple.

    So they try and scare you.

    First a company letter hand delivered. Then a registered lawyers lettter or hand delivered. Then if no response they sit back and think. Ok application to the high court, for an interim order to get you to stop using the name OR sue for infringing on their copyright, what ever that is.

    There is one problem, your name was out there before thier name came out. They did not do thier market research so they will try and steam roller you.

    Welcome to South Africa - If the crime does not kill you, big business will.

  13. #13
    Join Date
    Dec 2000
    Posts
    610
    This post made me do a search of the pending trademarks and wouldn't you know somebody is trying to trademark the two words in my domain name (It is a niche web site that is about 5 years old and gets about 15,000 unique visitors per day.) Their application looks to have been rejected but I still have to call the USPTO tomorow to see what I can do to protect my domain.

    -Mike

  14. #14
    Join Date
    May 2001
    Location
    South Africa
    Posts
    174
    Originally posted by aqua4
    Oh this is to easy

    About a year or two ago Mweb made a portal 24.com. This is also under www.news24.com as thier news portal. In order to get a hosting portal they want to sell web space under www.******.com and www.******.co.za . As easy as that. Simple.
    I've done some more research on this - MWeb merged with 24.com in Feb 1999 (a week after I've registered ******.com). The creation date on the whois record of 24.com must then reflect the transfer to the new owners, and not the initial registration.

    I don't think they would like to use the name - they merely trying to get me out of business.

    Welcome to South Africa - If the crime does not kill you, big business will.
    *lol* You've got that right!

  15. #15
    registered mail has no legal basis, no matter what anyone might have told you. yes, they have proof that the letter got delivered, but do they have proof (admissible in court) of what was actually *in* the letter? unless they had a notary public read the letter and mail it him/herself, you can say that there was nothing in the envelope when you opened it and noone would be able to prove otherwise.

    good luck to you and dont give in.

    cheers,
    paul
    * Rusko Enterprises LLC - Upgrade to 100% uptime today!
    * Premium NYC collocation and custom dedicated servers
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