Can someone TM a domain name that I own?

[PalmBeach]

Can someone TM a domain name that I own? Do I have any rights if I registered the domain well before they started the TM process?

 

[Dave Zan]

Yes. Yes.

 

[DNQuest.com]

Yes, Yes

 

[jberryhill]

Yes. Maybe.

 

[DNQuest.com]

John, you are "D'Man", but if they have the domain before it is TMed, they do have rights to it. Of course those rights can increase/decrease depending on how it was/is being used. Just looking for you point of view on this one.

 

[PalmBeach]

Does the United States Patent and Trademark Office look to see if a domain name is registered for a TM before issuing a TM?

Hypothetically, Lets say the domains were available and I registered Miami Pizza.com, DenvaPizza.com, HustonPizza.com, SeattlePizza.com etc. in anticipation of opening up Pizza parlors franchise in these locations in the future. Would I have any rights if someone applied for a TM before I was ready to open an outlet?

 

[jberryhill]

John, you are "D'Man", but if they have the domain before it is TMed, they do have rights to it. Of course those rights can increase/decrease depending on how it was/is being used. Just looking for you point of view on this one.

What does he mean by "before they started the TM process"? You have to be careful in parsing these questions. What most of the people who have posted this same question countless times are driving at is the filing date of a US registration application.

You are reading the question as "domain registered before trademark existed".

MOST people on these forums naively assume that a trademark is a right that arises by doing something at the USPTO. You know better, and you can take it from here. I'm not doing this one today.

 

[Creature]

Can someone TM a domain name that I own? Do I have any rights if I registered the domain well before they started the TM process?

Are you talking about registering a word with the extension? eg domain.com ?

I understood that the extension makes very little difference in the eyes of an examiner.

 

[DNQuest.com]

You are right John, I should know better. I took it as before the TM when most people mean file for TM, normally I read these pretty well, this one slipped by me. My I withdraw the question without looking too stupid??? or is it too late?

But at this point...


yes, maybe

 

[PalmBeach]

I am sorry If I was not clear. I apologize. Let me try again please.

If I registered MiamiPizza.com in 1/1/04 and You desided you liked the name and started the Trade Mark (TM) process for Miami Pizza in in 2006 1/1/05 and was issued a trademark for the name Miami Pizza in 1/1/07 do I still have rights to use the domain "MiamiPizza.com" or can you, as the Trade Mark Holder of Miami Pizza, keep me from using the domain name "MiamiPizza.com" that I registered in 1/1/04?

 

[DNQuest.com]

The big quesiton here is, did the TM holder use the name in commerce before they registered the TM? You can acquire common law TM status without having to have a registered mark. Using your example, If Miami Pizza opened for business in 1/1/99, then they would would have acquired common law TM. Even though they filed for a registered mark 1/1/05, it would be the date first used in commerce that would take precedence (and as long as they can prove it). This would be noted in the "first use in commerce" field of the registration application.

 

[jberryhill]

Of course, one would have to establish distinctiveness in "Miami Pizza" as something other than a geographically descriptive term, which they couldn't do unless they had, for example, been using the mark for at least five years prior to applying anyway.

You still don't have enough determinative facts for an answer, Palm.

 

[Creature]

I am sorry If I was not clear. I apologize. Let me try again please.

If I registered MiamiPizza.com in 1/1/04 and You desided you liked the name and started the Trade Mark (TM) process for Miami Pizza in in 2006 1/1/05 and was issued a trademark for the name Miami Pizza in 1/1/07 do I still have rights to use the domain "MiamiPizza.com" or can you, as the Trade Mark Holder of Miami Pizza, keep me from using the domain name "MiamiPizza.com" that I registered in 1/1/04?

Did anyone mention 'use'? Perhaps 'Miami Pizza' is a computer game, or a TV program, ie a different class to the tm. Unlikely I know, but if you were not selling pizzas, then my guess is that the tm holder would not be able to keep you from using the name.

 

[PalmBeach]

Would using MiamiPiza.com as a landing / link page constitute "first use in commerce" ?

If Godaddy is generating $ on the MiamiPiza.com on its Who Is Page dose that constitute "first use in commerce"

What use category would a landing / link page fall under?

 

[jberryhill]

Well, now we are branching off in several directions.

Creature and DNQuest, keep at it, but be clearer. You are doing fine so far, but you may need to pull it all together.

 

[DNQuest.com]

Did anyone mention 'use'? Perhaps 'Miami Pizza' is a computer game, or a TV program, ie a different class to the tm. Unlikely I know, but if you were not selling pizzas, then my guess is that the tm holder would not be able to keep you from using the name.

UGH!!!! ok, let's get out the gazillion "What-If" senarios and have 385875 posts about what could happen... or we can use common sense using the example given and try to stay on topic.

Creature and DNQuest, keep at it, but be clearer. You are doing fine so far, but you may need to pull it all together.

Aye aye Captain

 

[Creature]

UGH!!!! ok, let's get out the gazillion "What-If" senarios and have 385875 posts about what could happen... or we can use common sense using the example given and try to stay on topic.

I'm doing fine so far, thanks very much.