Reg Pre-Trademark Question

[paviod]

Hi all, just wanted to get some advice from you all about a domain. Let's say my domain name is whatever.com. I happened to register whatever.com 3 months before a pretty big entertainment movie corporation filed its trademark. Now I didn't know they were filing trademarks on the domain or there was even a company, but I got a phone call a few months after stating that they wanted the domain and that I was "cybersquatting" and asked me how much I wanted for the domain. I responded with what is worth to you. They got upset, we never made a deal. Tried contacting them after but no go. Seems like they weren't interested anymore. It's been almost 6 years now, they're a pretty big company and I want to use the domain as a forum for an unofficial fan forum website of their movies/actors/etc. The major actor having to do with the comp had come out with a few movies at the time not under the corp and i had mixed the titles of those movies into whatever.com. Just so happen to be their new corp name. I was planning on doing a fan site originally using those movies but got scared to because of the phone call. Am I allowed to put a forum for fans? Wouldn't they have taken it from me if they could have by now? And what can I do or can't I do to protect myself. Any advice? And has someone gone through this?

To clear things up - their first use of commerce / first use was 3 months after i registered the domain. Their filing date was 7 months after i registered the domain. Their registration date was 17 months after I registered the domain. This was some basic information I got from the trademark database.

 

[namedropper]

If the name is a trademark, you can't use it in a way to profit off that company's business, regardless of when they registered their mark. That is, unless you were alreday using the mark in that same field before they were using theirs and you could try to make a claim that you hold a regional trademark on it for that business making your own films or something, but that's complicated and clearly not the case in this situation.

So, either way, a site about *their* company or products (movies in this case) using *their* trademark is right out.

You should be perfectly free to use the name to run a website discussing something else entirely though, assuming it is different enough from films and entertainment that nobody could confuse the two.

 

[paviod]

If I was to run a nonprofit fan based forum, could they do something?

If the name is a trademark, you can't use it in a way to profit off that company's business, regardless of when they registered their mark. That is, unless you were alreday using the mark in that same field before they were using theirs and you could try to make a claim that you hold a regional trademark on it for that business making your own films or something, but that's complicated and clearly not the case in this situation.

So, either way, a site about *their* company or products (movies in this case) using *their* trademark is right out.

You should be perfectly free to use the name to run a website discussing something else entirely though, assuming it is different enough from films and entertainment that nobody could confuse the two.

 

[namedropper]

Yes, they could. You'd be using their trademark to discuss their property without their permission.

Whether they'd *bother* to do anything is another question. But they most certainly *could* do something.

 

[paviod]

Does that mean that I could put up any sort of website (eg adult) as long as its not referencing movies and cinema entertainment?

Yes, they could. You'd be using their trademark to discuss their property without their permission.

Whether they'd *bother* to do anything is another question. But they most certainly *could* do something.

 

[namedropper]

Main thing is, if the name works for another area, you can use it in that area. On the other hand, if it's the name of a company the kind which anyone who hears it will think of that company, then it really wouldn't work in another area and you're just plum out of luck.

Putting an adult site there is a whole other level of potential problems, because that can be construed as blackmailing the trademark owners to pay up fast. Not to mention that I'm pretty sure these days it's against the law to put up a site at a domain name with the intention of confusing kids into finding porn.

Without specifics, it's really difficult to tell whether there's any chance at all you could use the name for something else. The main question is if it legitimately makes sense for that other use.

But, honestly, the only way anyone can tell you even roughly whether you have a prayer is if they hear the name. And even then you're best off discussing it in private with a lawyer. My gut feeling from rereading what you've been saying previously based upon your recent comment is that you always intended the name to be confused with the actor and so it may not work for any other use. "Mixed the titles of those movies into whatever.com" implies that even if you didn't know the company name would come along later that you still infringed the trademarks of those movies. and those predate you registration.

 

[Domagon]

...I happened to register whatever.com 3 months before a pretty big entertainment movie corporation filed its trademark...

Scientific American - some excerpts:

Registration Number: 84333

Mark [image]

(words only): SCIENTIFIC AMERICAN

Standard Character claim: No

Current Status: This registration was not renewed and is considered to be expired.

Date of Status: 1992-11-03

Filing Date: 1911-07-19

Transformed into a National Application: No

Registration Date: 1911-11-28

Register: Principal

U.S. Class: 038 (International Class 016)
WEEKLY PERIODICALS
First Use Date: 1845-08-28
First Use in Commerce Date: 1845-08-28
Basis: 1(a)

Note the mark was registered 66 years after first use.

And this above registration later expired; other registrations since filed for the above mark - likely why this one was allowed to expire ... point is that "expire" doesn't mean what many folks might think it does ... the mark didn't expire, the registration did.

While I realize that you state later in your post that their "first use" is after your registration, but I still like this above example to illustrate that the USPTO is not akin to domain Whois. Rather the USPTO DB is quite different with many quirks that most folks aren't aware of ...

Ron

 

[paviod]

Well its wierd because I've owned it for such a long time and its just in my hands and i'm too scared to use it. I did talk to a lawyer and he did say that I could use it for whatever I wanted - he attempted to contact them to see if they wanted it but they stated that the lawyer we were contacting didn't work for them anymore (doubtful). So we just kinda broke contact with "our" lawyer and it died off. I'd like to use the domain for its original intention but like you stated, shouldn't. And I don't feel like handing it over or letting the domain expire. Not that i'm holding on to it on purpose, but I got the domain originally and I feel wronged to just hand it over to them cause they're a multimillion dollar corp. I mean, wouldn't they send me a transfer letter for the domain if they could have by now? If they had the right to the domain, my assumption would be that they would have taken it away from me.

 

[dtobias]

If I was to run a nonprofit fan based forum, could they do something?

In that case, it would more sensibly be whatever.org rather than whatever.com, wouldn't it?

 

[paviod]

Very true but i registered the name before there was even a company so I had no clue on a future trademark and figured .com are the way to go. If I go and buy .org now, i have reason to believe they might try to use that action like I purchased the domain in bad faith, which I didn't to begin with. My dilemma is what can i do with it without having them throw a lawsuit on me. And wouldn't they have taken it from me if they could have by now? They definately know about the domain cause i was contacted by them years ago.

In that case, it would more sensibly be whatever.org rather than whatever.com, wouldn't it?

 

[namedropper]

You AGAIN ask, "wouldn't they have taken it from me if they could have by now?"

Apparently you aren't listening, as that's already been answered.

And the claim that you had the trademark before the company doesn;t mean as much when you admit that you made the name up based upon already-trademarked film names. The later trademark isn't as big of an issue as the earlier movie trademarks.

It sounds like you are choosing to focus on what you want to focus on and waiting until you hear the answers you want to hear.

 

[paviod]

I understand and I apologize for posting the obvious answer again. I was mainly just referring to the .org comment. Though i've never claimed that I had the trademark before the company, if I did I wouldn't be in the position i'm in now.

You AGAIN ask, "wouldn't they have taken it from me if they could have by now?"

Apparently you aren't listening, as that's already been answered.

And the claim that you had the trademark before the company doesn;t mean as much when you admit that you made the name up based upon already-trademarked film names. The later trademark isn't as big of an issue as the earlier movie trademarks.

It sounds like you are choosing to focus on what you want to focus on and waiting until you hear the answers you want to hear.