DNForum.net !

[mole]

Sure, getting a tm on everything you own on namespace is a no brainer, its another silver down the barrel, as any bullying werewolf would know.

Question is when, and under what circumstances? Is it critically necessary?

Not everyone is lined with deep pockets to think that $300-400 is a walk to the nearest McDonald's for a meal.

Specifically for DNForum.com, I doubt it is a critical issue. But if Dan has some spare change to throw around which he won't miss anyway, why not? I hear USPTO are so under stretched today you can get one in less than a year tops.

 

[NameBox]

In the real world, the process would start like this:

1. Provisional Name Clearance
2. Incorporation
3. Trademark Application
4. Use of brand or service mark to establish actual operation and provisional rights under that name.
5. Granting of TM or SM after a statuatory period dependant on jurisdiction.

Would anyone company start marketing a good or service with a specific name WITHOUT having first applied for the TM or SM??? No. That would be suicidal. Imagine, you make and market your widget under some name, failing to register a TM only to have someone else decide it would be wonderful to piggy back on your products success.

Domain registrations don't circumvent the rule of law. Mole, you talk about expense of trademark application. You can extend that to how expensive it is to incorporate, retain an accountant, etc., etc.

Bottom line, if you want to operate a site "legitimately" why WOULDN'T you apply for a trademark FIRST. One should not fear WIPO as much as litigation in my opinion.

StockPilot, the time line of your FundPilot example is somewhat suspect. Given the .com application AFTER the German companies filing of ITU (if rapidtransit is correct). That only reinforces you argument that a TM application is the way to go ....

Folks, this is why naming companies get $100,000 +++ to coin a name like Agilent, Lucent, etc., etc., as legal issues including WORLDWIDE clearance of trademark is a must for most companies ....

 

[rapidtransit]

We are starting to talk in circles here.

I would assert that Domain Name Forum has a decently arguable common law trademark. That trademark in demonstrated by "use in commerce." The use in commerce is established by the very fact of the site's existence and the further fact that it carries banner ads. It would help if the host added "TM" to the mast. That doesn't guarantee anything, but it is an assertion of right.

And let me make one other point. If you can't assert a common law trademark, you won't get a registered trademark either. A registered trademark requires use in commerce or intent to use in commerce. If you file "intent to use" you then have alimited time to actually use in commerce or your registration dies.

If you go for a registered trademark, it will help a lot to have a TM attorney (not the local ambulance-chaser). I have one. It will at least double your overall cost., unless he/she's a friend. The reason is that you often get correspondence back such as a "Non-Final Action," which requires a response. If you don't answer these communications accurately and timely you may lose your ®, your filing fee and your effort.

 

[mole]

Originally posted by NameBox
Bottom line, if you want to operate a site "legitimately" why WOULDN'T you apply for a trademark FIRST. One should not fear WIPO as much as litigation in my opinion.

Dan could answer that best, but I think he didn't suspect it would be a hit it has become. A forum is a forum, and there are few forum-based business models that qualify as 'legitimate' businesses to my knowledge.

There is, fairly, no such thing as being required to secure a TM to operate a site "legitimately".

If the site takes off and has real profit or investor interest potential, then fine. It is easy to set up a forum as most would personally know, it is a shot in the universe as to whether it succeeds to even becoming a serious business.

 

[NameBox]

Firstly, your argument re: common law trademark is spurious. Since when can you assert rights by sticking TM on the masthead. What a sham. How about stick Inc. or Ltd. on the end of your no incorporated company name, and asserting limited liability when there is none. Will the "intent" to one day incorporate wash there as well ....

First file, then demonstrate usage, then (hopefully) have the trademark granted. Using the name in advance of filing is meaningless. You must know of many companies who file localized (national) TM registrations after having:

1. a trademark granted in one of more countries.
2. intent to market that product or service in another territory.

There are many instances of companies having trademarks for a good or service in several jurisdictions, and being precluded! for using that trademark in another jurisdiciton due to a "local" conflict. So YEARS of prior usage and trademark holding can, in fact, be meaningless.

Mole, your argument doesn't make any sense. If you are operating a business, and not a hobby, one would hope (if there was any potential for profit) that you'd incorporate, and (if applicable) consider a trademark. Incorporation does grant limited rights to a name, given at least clearance necessary against registered trademarks, service marks, or other corporations across a jurisdiction.

So its not so simple as "I've got the .com and have operated a site for x months, so therefore a TM isn't necessary ...." However, Dan's motivations could have been as you have stated. Anyone can license vBulletin and set up a forum, its true, and the profit potential could have been negligable ... but you have to plan ahead ...

Finally, I think that we are given this "wanda" a little too much credit. If Dan renamed this forum DansDNForum, etc., we'd still be here, and not patronizing a wanda owned site ...

 

[mole]

Originally posted by NameBox

Mole, your argument doesn't make any sense. If you are operating a business, and not a hobby, one would hope (if there was any potential for profit) that you'd incorporate, and (if applicable) consider a trademark. Incorporation does grant limited rights to a name, given at least clearance necessary against registered trademarks, service marks, or other corporations across a jurisdiction.

Of course it doesn't make any sense, box. You did not process what you read in the previous posts.

As I said, its a no brainer to TM whatever you have *yawn*. The point of the discussion is, why not?

 

[Capt. Flash]

Originally posted by NameBox

StockPilot, the time line of your FundPilot example is somewhat suspect. Given the .com application AFTER the German companies filing of ITU (if rapidtransit is correct). That only reinforces you argument that a TM application is the way to go ....

The point I made and put in the prior posts is this;
Fund Pilot was started in the mid 1970's, it started small and grew. The founder felt he did not need to file for a TM because he thought he had established common law rights. His system for investing has been written up in numerous publications over several years prior to the web site. 30,000+ people pay a great deal of money for his service. When he decided to go from a mailed news letter to a web based application is when the whole TM matter reared it's ugly head. Actually when he turned down the offer to sell the .com (replied to offer name unavailable due to development). Anyone with an average intelligence that visits the site www.FundPilot.com could not reasonably say this was a site suspiciously thrown together, maybe for the purpose of cybersquatting. Obliviously years of work went into development. He actually had incorporated many years prior to the web site. This is why I used this example. The parallels to DNForum are real. BTW the Germans knew full well of the prior use.

Sorry, this has to be my last response, I actually have a real business to run and have obtain the information as to the state of domain name sales that I was looking for. Good luck to you all.

 

[rapidtransit]

Originally posted by NameBox
Firstly, your argument re: common law trademark is spurious. Since when can you assert rights by sticking TM on the masthead. What a sham. How about stick Inc. or Ltd. on the end of your no incorporated company name, and asserting limited liability when there is none. Will the "intent" to one day incorporate wash there as well ....

Trademarks are not the same as incorporations. A common law trademark is an assertion of right secured by usage. It may or may not help you in a legal proceeding. A common law trademark assertion is secured by a "TM." A registered trademark is secured by an ®, which may only be used if you actually have a registered trademark.

There is a similar issue with copyright. Under new copyright conventions, every work of original authorship is automatically copyrighted in signatory countries. If you file your copyright, you gain additional protections and additional remedies in case of infringement, as with a registered trademark.

Incorporated is entirely different. A corporation is an artificial person defined by law. You cannot be a corporation without legal process, plain and simple. There is no such thing as a common law corporation, but there are common law coprights and trademarks.

Before oeople start spending hundreds of dollars on a process that typically takes a year or longer and may not even result in a registration, they need to do a lot more studying. You can start with http://www.uspto.gov/web/offices/tac/tmep/1200.htm#_Toc2666059 and http://www.uspto.gov/web/offices/tac/tmep/1200.htm#_Toc2666201

For an example of a case where a common law trademark was successfully used in opposition to an attempt of registration of a similar mark, see http://www.uspto.gov/web/offices/com/sol/foia/ttab/2dissues/1999/98713.pdf.

So common law trademarks, unlike common law corporations, do exist.

 

[Capt. Flash]

Mr. Rapid-- Thank you. I know I said I could not post any more, but the temptation was too great. I read the link on the common law precedent. I thoroughly enjoyed the following two quotes on page 3.

"That Opposser's business is substantial and nationwide..."

"That Opposser's has created a valuable reputation and goodwill in it's marks, and the marks have become associated in the minds of the relevant purchasing public with opposer's....."

As I have explained more than one time on this thread, DNForum at present does not meet any of this criteria. Therefore, do not have any common law rights.

No income at all. 1200 members when there are millions of domain name holders. No common law rights have been established by DNForum, contrary to other opinions posted. Does not come close.

Not intended at Rapid but to the moderator's and constant poster's that reside on this forum;
Just out of curiosity what is it that the major posters do for money on this forum. I am amazed at the amount of time some people have to sit around day and night and do nothing but post their opinions for free. I have spent some time here the last few days but only for research. Some of you are here 18 hours a day, what gives?

Thanks agian Rapid, I did not have the time to research and prove my points.

 

[rapidtransit]

But Stock---

You are dealing with a logical inconsistency. Trademark registration demands use in commerce. Been there. Done that. An ITU application does not become a registration until that Use Amendment is filed.

If Domain Name Forum does not have "substantially use," as you contend. sufficient to claim a common law trademark, it certainly doesn't have standing to get a registered trademark.

BTW, in respect to "Fund Pilot" I understand your points and would be the first to argue that your associate has a valid common law trademark, if they have been using the name since the '70s, as you contend. But clear up something for me. WHy did they move to trademark fundpilot.com instead of opposing the German company's attempted registration? Or do both? That's what I would have done.

 

The domain industry is more than just a hobby to some of us.

Personally, i have several forums/chats open alongside other windows containing the revenue generating aspects.

The exchange of ideas, information and discussion in general is a very important part of the domain game imo .

 

Originally posted by NameBox
Since when can you assert rights by sticking TM on the masthead.

"Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO."

-From the USPTO Basic Facts About Trademarks

http://www.uspto.gov/web/offices/tac/doc/basic/register.htm

The only TM-associated symbol that requires outside certification is the "®," indicating a registered trademark.

Miles

 

its worth pointing out that adding "tm" in the uk would be illegal as you can only use those letters after filing an application.

 

Originally posted by safesys
its worth pointing out that adding "tm" in the uk would be illegal as you can only use those letters after filing an application.

I wonder if this has any implications for sites not based in the U.K. using TM on a non-registered mark...especially if they do some biz in the U.K.

Miles

 

[Capt. Flash]

The associate got some advice (probably from a forum like this one) that he could qualify for "a special use mark" by filing an application for fundpilot.com and get his web site trademarked simultaneously with the Germans US mark and peacefully coexist. This reiterates a point I tried to make earlier that goes back to the good faith contention, he really honestly acted in good faith, fully believing he was in the right and he was. Therefore, he did feel it necessary to seek proper legal representation, the Germans smelled blood because he had no attorney and made a mess of it. They have a very powerful law firm that represents them domestically. I actually am involved in a situation with Stock Pilot with the same Germans, I however had registered my domain name and incorporated many years prior to the German's interest. I foolishly thought; since I too had acted in good faith, that I could single handedly beat them. I soon wised up and paid a good law firm a pretty penny to defend my property, the outcome will be completely different for me than my associate. The moral is that filing a trademark application is cheap insurance compared to the potential 5k I have spent to date and I am sure it will be more, (currently waiting on the German's next move to estimate further cost's.) Even though I acted in good faith and the German's are acting in bad faith, here we are.

As to your statement "If Domain Name Forum does not have "substantially use," as you contend. sufficient to claim a common law trademark, it certainly doesn't have standing to get a registered trademark." I agree with you. My point was directed at the post's that claimed that DNForum currently enjoyed common law rights or the common misconceptions that you can buy a domain name stick some links and a tm on a site and be protected.
I do believe though that a year from now DNForum's statement of use amendment would be accepted if they continued to grow and ranked up on the search engines. The USPTO are now conducting search's on Yahoo for verification along with potential conflicts. After all a certain amount of reasonability has to be used by the USPTO, as they realize a company has to start somewhere. Most statement of use's I have seen declined are ones that have absolutely no history of existing (no business being conducted). Again, I am not an attorney. Like you been there done that. I have learned from some costly mistakes.

 

[Capt. Flash]

Safesys-- I am not the most intelligent guy, so please explain in a little more detail how you generate your income?

 

[NameBox]

Originally posted by safesys
its worth pointing out that adding "tm" in the uk would be illegal as you can only use those letters after filing an application.

Same in many European countries and members of the Commenwealth (Canada, Australia, etc.).

I think that a lot of debate is US focused, however, I've seen many cases where your "common law" usage just doesn't hold (certainly internationally).

Otherwise, why the effort on many parties to protect trademark across many jurisdictions.

 

Safesys-- I am not the most intelligent guy, so please explain in a little more detail how you generate your income?

Pay per click search engine conversion of my domain traffic (revenue share of bids held with an affiliate partner) and selling domains as and when the offers are more attractive than retaining them.

 

[Capt. Flash]

Originally posted by safesys


Pay per click search engine conversion of my domain traffic (revenue share of bids held with an affiliate partner) and selling domains as and when the offers are more attractive than retaining them.

And that is it? Do you have a web site listing your domains? Do you honestly have people contacting you and making descent offers these days? I am glade someone is making money off domain names lately.

 

[rapidtransit]

Originally posted by NameBox


Same in many European countries and members of the Commenwealth (Canada, Australia, etc.).

I think that a lot of debate is US focused, however, I've seen many cases where your "common law" usage just doesn't hold (certainly internationally).

Otherwise, why the effort on many parties to protect trademark across many jurisdictions.

Because trademark registrations are country-specific,