Quick question about some TM issues...

[Fatbat]

I'll keep it simple, but I suspect it's not so clear cut.

If a business has been operating under a particular moniker for 10 years and built a reasonably large business around that name in that time, but only applied for trademarks in 2007 and 2008, do they have any legal grounds to go after a domain registered in 2005?

Thanks.

 

[jberryhill]

Assuming the name is otherwise distinctive, yes.

And of course it matters what you mean by "go after".

If we're talking about the UDRP, then the important questions as usual are going to be whether it is reasonably likely to conclude the domain registrant was aware of this business and its reputation, etc.

But if consumers in the relevant market recognize the mark as a distinctive indicator of the goods and sources originating with that source, then, yes, they have a trade or service mark.

AND, if that business operates in a jurisdiction which recognizes common law trademark rights (most of the English-speaking world, for example).

 

[draggar]

Another question is -
Does the domain usage violate any of their trademarks?

If it's a made up term (Microsoft, Cisco, etc..) then the complainant will have an easier time with the UDRP.

If it was a name (Dell etc..) and both parties share the name or it is a generic term (Windows, Apple), the complainant's TM is based on something not based on the generic's meaning (the two examples are computer related) and the respondent uses the domain for the generic meaning (glass windows / car winshields / stained glass and apple (the fruit) related products).

 

[stock_post]

I'll keep it simple, but I suspect it's not so clear cut.

If a business has been operating under a particular moniker for 10 years and built a reasonably large business around that name in that time, but only applied for trademarks in 2007 and 2008, do they have any legal grounds to go after a domain registered in 2005?

Thanks.

Looks like you really know the answer....
based on the fact you did your homework and came here.

 

[Fatbat]

Well, actually, no I don't know the answer. Otherwise I wouldn't be asking. I have some knowledge of reverse hijacking cases and am trying to figure out if this falls into the same category.

If ABC company, a reasonably generic combination of two words made into a one word mark, has ABC.com and someone registers ABCvacuums.com, a hypothetical market in which ABC company was never engaged but now wants to trade in, and which they recently filed mark protection for, do they have a case?

This is a European operating company that doesn't market themselves globally. It's a specialized business and isn't a household name. Very few people outside of Europe will have ever heard of them. They were recently bought by a much bigger globally recognized company but still operate under their old name.

 

[jimboz1]

If the domain name contains the term that is a trade mark (albeit an unregistered one) they have a good case. It sounds like the business name (ABC) is distinctive enough to have been afforded trade mark registration either (i) by being distinctive enough; or (ii) by having acquired a reputation. I would just hand it back and avoid any further trouble. Legal fees can be expensive if you have a costs order awarded against you.

 

[Fatbat]

Sorry, to take it further...

At what point does a company name become a "mark"? I can go around all day long making up company names and even operate under them all, but I certainly don't think I am going to be able to defend them.

So at what point does a name become a recognized and defensible mark?

If the domain name contains the term that is a trade mark (albeit an unregistered one) they have a good case. It sounds like the business name (ABC) is distinctive enough to have been afforded trade mark registration either (i) by being distinctive enough; or (ii) by having acquired a reputation. I would just hand it back and avoid any further trouble. Legal fees can be expensive if you have a costs order awarded against you.

Hey thanks 1 poster

 

[jimboz1]

Everyone has to start somewhere. Does that make me a 2 poster now? ;-)

 

[Fatbat]

Heh, perhaps. You're progressing nicely.

One more...

What about recognition of common law marks? If someone operates a European business that doesn't operate globally and isn't a globally recognized brand, can they expect global common law protection of their brand if it isn't trademarked? How does this get interpreted to domain names?

 

[katherine]

2 key points to consider IMO:

• how the domain has been used (similar industry ?)
• did you know about that company when you registered the domain ?

 

[jberryhill]

I love it when a "semester course in a thread" has a catchy title like "some quick questions."

At what point does a company name become a "mark"?

Never. A company name is a company name. A mark is a mark.

Example 1:

I form ABC Corp. I sell "XYZ dog food". XYZ is my trademark for dog food.

Example 2:

I form ABC Corp. I sell "ABC dog food". ABC is my trademark for dog food.

Now, in example 2 ABC is my company name, and ABC is my mark. But ABC did not "become" my mark through some sort of voodoo involving my company name. ABC "became" my mark because I was using it as a mark.

can they expect global common law protection of their brand if it isn't trademarked?

There is no "global common law". They can expect common law protection in every common law jurisdiction in which they use their trademark to distinguish their goods or service from others in the relevant market. They can also expect whatever other or additional rights are available by registration in every jurisdiction in which they register their trademark.

How does this get interpreted to domain names?

Going to need something more of a grammatically coherent question there.

 

[britishbulldog]

If its a made up name you doomed,if it's a generic term you are o.k if you don't use it for the classes the TM is registered or similar to their business if unregistered.......pretty simple as that but the with the corruption going on with WIPO and UDRP you are probably doomed anyway :-0

 

[Fatbat]

I love it when a "semester course in a thread" has a catchy title like "some quick questions."

Heh, sorry about that. One question leads to another. Thank you for your help and patience though! Your contributions to this thread (and forum) are enlightening and greatly appreciated.

Never. A company name is a company name. A mark is a mark.

Example 1:

I form ABC Corp. I sell "XYZ dog food". XYZ is my trademark for dog food.

Example 2:

I form ABC Corp. I sell "ABC dog food". ABC is my trademark for dog food.

Now, in example 2 ABC is my company name, and ABC is my mark. But ABC did not "become" my mark through some sort of voodoo involving my company name. ABC "became" my mark because I was using it as a mark.

Understood. My next question would be; what's the point of registering trademarks if by the very nature of using a mark affords you protection anyway?

There is no "global common law". They can expect common law protection in every common law jurisdiction in which they use their trademark to distinguish their goods or service from others in the relevant market. They can also expect whatever other or additional rights are available by registration in every jurisdiction in which they register their trademark.

Going to need something more of a grammatically coherent question there.

So if they operate and market exclusively in the EU and are only a recognized brand there, can they expect protection in the rest of the world? If it's a domain name, is it not by default, a global usage?

Can they expect other or additional rights available by registration even if that registration happened after the domain was registered and for products/services which they only claimed at the time of registration?

 

[jberryhill]

what's the point of registering trademarks if by the very nature of using a mark affords you protection anyway?

That would depend on your country.

Registration confers a number of procedural and substantive advantages.

In the US, a registered trademark is presumptive evidence of the ownership and validity of the mark. You don't have to prove up the elements of a mark, because you have a registration certificate.

Common law rights depend on geography, and arise under state law. US Federal registration provides nationwide constructive use. For example, if I run a bakery in New Jersey and New York, I can obtain federal registration, and can use it to stop you from using the same mark in Hawaii. Without federal registration, if I had not been actually using the mark in Hawaii, you could go right ahead and use it.

Another advantage is that federal registration provides constructive notice to others of the mark. If I have a registration, and you are infringing, I do not need to prove whether you were aware of my mark - my federal registration provided you with notice (whether you looked at it or not).

So if they operate and market exclusively in the EU and are only a recognized brand there, can they expect protection in the rest of the world? If it's a domain name, is it not by default, a global usage?

I'm having a hard time putting those two questions together.

If they are not engaging in commerce in the US involving goods or services bearing the mark, they are not using the mark in the US. They may have a domain name, and their website may be accessible from the US, but so what? Having a domain name and an accessible website, without more, does not constitute use of a trademark in the US.

...and, again, in the US, trademark rights arise through use of the mark on goods or services in commerce in the US.

 

[Fatbat]

Thanks for the info John.