hyphenated domain problem

[jumpbug]

Say I have a company called xyz media LLC and own the domain www.xyzmedia.com. Someone then comes along some months later and registers xyz-media.com and then shortly after that registers xyz media as a trademark. Can they do that? Who has the right to go after who? I would assume the LLC would have every legal advantage

 

[petrosc]

I think that nobody has the right to go after anyone.

Trademarks are being regstered to protect the holder's rights. If you neglected to register a trademark, then you are not protecting your domain or company, so now you have no claim!

Now the other person has rights to the use of that term...and you don't. He can't however come after you because you have had this domain before he registered the trademark.

 

[PRED]

Hi,
i agree with that. However nothing is written in stone especially with drs proceedings.
Examples are if employess get wind of patents in the offing etc & register domains before patents/trademarks are granted etc
If there is no malice in the reg. you should have nothing to fear.
Also worth looking where the trademark is held, nationally, europe, worlwide? It's all split up now.
Good luck .
Pred

 

[petrosc]

Examples are if employess get wind of patents in the offing etc & register domains before patents/trademarks are granted etc

Pred

...never crossed my mind....

 

[mgstudent]

the LLC does have the advantage of time.

Now 3 things could occur:

1. Both continue trading with their respective company names/domains
2. the LLC goes after the other
3. the othe goes after the LLC

In the past I've registered a trademark and european designs (these are called design patent in US) and so am familiar with some areas of UK / Euro trademark law.

Issues that are very important in each of 1, 2 and 3 above are:

1. Do both companies trade in the same industry?
You used the word 'media' in your example so I presume you operate in the same industry.
If your names are confusingly similar and your businesses are in the same industry, then I would predict that you would win the right to take his hyphenated domain and the right to cancel his trademark registration.

2. For him to be granted a trademark his mark must have been non generic / descriptive. But this is the same for you to be seen as having an unregistered trademark. Many trademarks are made up of unrelated words.

Examples that can be registered:
Jugi Food (non generic, name-like, not linked to food - allowed)
Seagul Cafe (2 x generics, but non-descriptive and unrelated- allowed)

Examples that can't be registered (from patent.gov.uk site) :
Tasty Food (tasty describes the food - so this is unacceptable)
7 days a week (too many traders use this to describe their service)
Toys Direct ('direct' describes goods sold directly to the public, toys is generic - so this isn't allowed)

3. If your businesses are in different industries then it will be more difficult for you to claim a right over his domain name. After all you have the name .com, he just has the hyphenated .com, it isn't like he is holding all of them for ransom and not allowing you the right to take your business online.


... OK i just got carried away watching CSI for 30 minutes and so will finish this up now...


So you will have to think of how close your businesses are (type of industry) and also if you think that you customers will be confused between your companies.

You having the LLC shows that you are trading with that name and even though you haven't registered a TM you still have an 'unregistered trademark right'. So this is a major defense if they contact you about infringing their name. Plus it's a major piece of evidence (your LLC's date of incorporation) that you can use in your attack if you need to.

If he has only applied for the TM and hasn't been granted it yet, you will be able to make a formal objection to stop it from being granted. Otherwise, if he has been granted it then you still have the right to question it and officially get it overturned.


OK that's my 2pence worth.. good luck.. and I am not a lawyer.. so don't rely on anything I say. There are many sites out there to help you with this though.

Mg

 

[jumpbug]

thanks for the in depth response mgstudent. we are on the exact same industry and the combination of words is unrelated.

 

[mgstudent]

No worries, I'm pretty interested in this type of thing.

If I was you, I'd get together all of the dates that you can:

The date you first started trading and any customers/invoices that may support this. (note: this is most likely before you incorporated to LLC)
Your LLC incorporation date.
Your domain registration date.

Their domain registration.
Their trademark application date.
Their trademark published/approval date.

Also are they LLC or incorporated in any way?
Is the trademark registered by their company or an individual?

Each of these may affect how you approach getting it sorted out. I really wouldn't want people in the same business using my name. But don't delay.

You might still have a right to oppose the trademark before it's been published. If it's already been approved you can probably get free information from the trademark organization in your country (probably US).
I'm sure that they'll be helpful in directing you and be able to give you basic information regarding the registration.


Lawyers can be expensive, but depending on how complicated things are you may be able to file your own trademark complaint and ICANN compaint (but I'm less sure about ICANN).

Also have you had any contact with this other company before or after the trademark or domain registrations?

If someone is infringing your unregistered trademark you should stop them. Your company name needs protecting.

In the UK this could be seen as a case of 'passing off' which is far more serious than simple trademark infringement. 'Passing off' is where a company knowingly uses another companies name to sell products or services. In this case they are purposely misleading customers.

Anyway goodluck.

You never know, maybe you can send them an email with your objection explaining the dates and how they are affecting your business and infringing your name... and they might stop, and change name.

A sturdy cease and desist letter might work (it's worked for me in the past) - just make sure you don't put something in the letter that can come back and bite you in the ass later - if things were to get more formal.


Mg

 

[jumpbug]

the trademark is registered to an individual in the uk, he registered it in both the us and uk.

i contacted them several times in the past few months with no avail, then a couple of weeks ago they registered the trademark, and we finally got in touch a few days ago. he let me know that he has the upper hand because he has the trademark. i didn't believe him, but i would like to know where i stand. lawyers are expensive, but usually worth it. let me know if you have any more thoughts after hearing those few details i just added. thanks again.

 

[mgstudent]

you said that a couple of weeks ago they registered the trademark...

is the status of the trademark 'approved' or 'pending (being proccessed)' or whatever your agency calls it...

There should be two dates. The application date and the published/approval/granted date.

If the trademark has just been applied for, it takes 2-6 months to be granted (my memory's vague on this for UK law). There is a period of time after that is reserved for cases like your, where right holders can come forward and oppose his trademark registration.

This is why as part of the registration process the trademark gets published online and in a hard copy journal. This gives an opportunity for people to oppose the mark when they read the trademark journal.

Even though a trademark can be opposed even years later, it is much easier if you get in early. Plus if you leave it for years, then its harder for you to say that it's affected your business when you've allowed them to use the name without complaining.

It looks like they have just started to register it, it's a good time for you to move on this. You might not need a lawyer to simply oppose his trademark application.

ok i'm assuming you're from the US. I just checked the USPTO site:

PUBLICATION FOR OPPOSITION

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.

The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.

The important bit seems to be

Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

I think that even if it's too late for this you can still try to object but it will be trickier. It still seems like you have the stronger rights.

You can read full information at http://www.uspto.gov/go/tac/doc/basic/afterapp.htm

I think you need to check the USPTO site. Whilst I was reading I did notice a few differences against UK law, so you're best to read the facts there.


[I just re-read and saw that you said he registered the mark in the UK and US, I don't think that you will have any rights at all over his business in the UK, but you should be able to contest his trademark there in US. Geography is very important. I hadn't really thought about that and my replies have all assumed you're both from US. Makes things a bit trickier. I can go and beat him up if he's in the UK ]

Let me know how it goes.

Mg

 

[Dave Zan]

Say I have a company called xyz media LLC and own the domain www.xyzmedia.com. Someone then comes along some months later and registers xyz-media.com and then shortly after that registers xyz media as a trademark. Can they do that? Who has the right to go after who? I would assume the LLC would have every legal advantage

Sure you can do that. Anyone has the right to go after someone.

But...it might end up with no one.

Kidding aside, you potentially have every legal advantage. But no one knows
for sure until all relevant and applicable facts are evaluated.

IANAL.

 

[jumpbug]

when i search for it here:
http://www.uspto.gov/main/trademarks.htm
it shows up, which i can only assume means its live now. it said the filing date was november 18.

so that means i should probably go after them, and go after them right now, correct?

 

[mgstudent]

If the filing date is Nov 18, then he hasn't been granted the trademark yet but you should act soon.

The date for his UK application may be much earlier, but I would give the USPTO a call and explain the situation, they will give you more information about objecting and the date that you must do it by.

Also keep all email (or other) correspondance that you've had with the guy...
It seems like he's trying to rush this registration even though I'm assuming that you have probably emailed him before Nov 18th from what you've said.


Good luck though - I don't know if you have read the bit I edited in my last post, but the bit about geography at the end is important and something that I hadn't considered.

In any objection to the USPTO, you will no doubt have to prove that you have been using your name and that any trademark used by the other guy will hurt your business.

Useful things to use are customer invoices, ad cuttings from newspapers that you may have placed... and other things that have dates and show how you are established.

Don't worry if you don't have these, you should still have a case with your LLC. But the more that you can prove that it will affect your business and you have been established for a while, the better.

:yes:

 

[jumpbug]

Yeah, ideally what would happen is I get the US trademark, the UK isn't as important to me although I'd still like to have it.

Then I'd like to go after his domain name, but I'm not sure I could get it if I only had the US trademark and not the UK trademark as well. I don't know enough about the ICANN's workings though.

Anybody in here interested in possibly representing me? I used Howard Neu last time for internet law and he was great. I'll probably use him again unless someone is interested in this.

 

[mgstudent]

if he has the hyphenated then I dont think that he'll get much traffic there, so don't know how useful it will be paying lawyers to get it for you. You just want to cripple this guy's ability to trade with the company name :upset: and you want to stop his trademark.

He really shouldnt have tried to register the trademark if you had contacted him before... the nerve of him

Hopefully you'll get it stopped and he will learn the hard way, having wasted his money on the trademark application....

...I'm in a bit of an evil mood... I think this is coming out in my posts :undecided:

 

[Dave Zan]

so that means i should probably go after them, and go after them right now, correct?

If that's the case, you might want to ask advice from a licensed experienced
professional instead of an online forum's legal section.

 

[jumpbug]

well of course, just wanted to get a general idea here first