TM and Comercial Use by someone AFTER my registration

[domain_investor]

Here is an interesting trademark situation I'm hoping someone can shed some light on for me. Sounds to me like I'm in the clear, but just checking...

I hand-registered a .com name in 2005. To my recollection the other tld's were not taken. No dropcatcher was needed; I didn't "steal" a name that was by mistake not renewed. It's a made up word, but one I thought people in a couple of different industries could be attracted to in the future. There was no trademark at the time and I searched around and I found no reference to the name being used in a commercial way.. I originally had it parked with Sedo, but I started to think it was such a cool name that I wanted to make sure there were no future problems, that I unparked it and put up a xxxxxx.com coming soon page. And I do have an idea for the name that I have been working on, off an on.

This week I received an offer (not nearly enough) on the name with the bidder mentioning that he has the other tld's and would like to buy the .com to build a .com site around his trademarked name. He threw in the word "trademark" in passing, not in a threatening manner, but certainly to make sure I caught on that he had the tm. I checked the trademark office again and there is now a trademark that was filed mid-2006, perhaps 6 months after my purchase of the name.

This name is not even the name of the person's company, but of a line of products he is now calling with this name. But, I searched his company web site where he has all the info on his products and the word does not even show up anywhere. I then went and googled the term plus his name (which is the same as the company name), and there are only 3 references that are just published int he last couple months. They are industry articles that say things like "so and so was showing his new line of 'widgets' that he is calling [domain keyword]."

So this is what I see as the facts:

1. It appears obvious to me that there was no commercial venture in place with this name prior to my registration, or the line of products were out and were not being named with the trademark at the time..
2. There is a trademark that was filed at least six months after I registered the name (didn't have to use a drop catcher; it was just there)
3. There is no reference to this "line of products" on his website and only very recent references in the search engines.
4. I have not parked the name trying to profit off his line of products.
5. Oh, also, my idea for the site is in a whole different tm class anyway, although I have not divulged this info anywhere yet.

What is the opinion of readers here? Does this situation fall outside the cybersqauting law?

And, if he were to intend to pursue me, isn't there an opposite law that I can use for someone trying to take my name via late stage tm registration? I forget the name of this law.

I might be willing to sell the name for the x,xxx range and I've been offered xxx. Just want to know how I should proceed. By the way, I'm sure I have more money than he does to fight. It's not a major company.

 

[Tia Wood]

You do sound in the clear. I wouldn't worry about it.

 

[jberryhill]

there is now a trademark that was filed mid-2006

I seriously doubt that your friend has obtained a registration based upon an application filed in mid-2006.

 

[BELLC1]

I was going to say the same thing. That would be one FAST USPTO trademark.

But -- on a side note, I have numerous trademarks with my state because they are instant. I'll be waiting forever with USPTO. I did the State ones to basically protect me under Louisiana law to operate within the state without infringement. It also gives me something to use if I ever need to prove how long I've used the name(s) in commerce. Naturally, USPTO would be dominant but this gives me a quick start in filing by showing initial dates of use.

Mr. B. could speak better of it, but that is what was recommended to me back in 1998.

 

[domain_investor]

I seriously doubt that your friend has obtained a registration based upon an application filed in mid-2006.

I looked again. The Filing Date is April 2006. There is no date for "published for opposition" and no date for "Registration Date".

I own a trademark on something else that has all three dates. The original Filing Date, a Published for Opposition Date (about 9 months later), and a Registration Date (about 11 months later). So, now I understand -- they just filed and no one has really looked at it yet there, I assume, right?.

When it it becomes published for opposition, can I oppose it just based on owning the domain name and having a coming soon page, especially if I added more details? Well, I know I can, but would it do any good?

 

[jberryhill]

I looked again.

Some days, I just feel psychic...

The Filing Date is April 2006. There is no date for "published for opposition" and no date for "Registration Date".

You might want to click on "TARR Status" and see if an action has issued....

 

[domain_investor]

Interesting. I've never tried the TARR button. Here's what it said:

"A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made"

The date is from about 4-5 months ago.

Is it possible a a refusal could be due to me owning the domain name with the notice that the site is coming soon?

 

[jberryhill]

Okay, now click on the "TDR" button and read the actual initial refusal...

Is it possible a a refusal could be due to

Tune in 15 minutes from now, for the next episode of Trademark Mystery Theater....

 

[Dave Zan]

I remember at least one "unique" UDRP:

http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0073.html

Probably the main reason why the respondent lost:

Since Complainant has provided no evidence to support its allegation that its common law trademark rights in its mark accrued as early as 1998, Respondent’s claim that she registered the disputed domain name before the registration date of Complainant’s mark might support a finding that her registration of a common phrase gave her rights in the disputed domain name. Not only have panelists almost uniformly rejected importation of any notion of constructive notice arising from mark registration into determination rights or lack of bad faith under the Policy,5 Complainant’s use of common words in its mark makes it more likely that a member of the public, even a competitor, might innocently have registered that phrase as a domain name.6

But Respondent has frankly acknowledged that she knew of Complainant’s mark and business before registering the disputed domain name. At pages 3-4 of the Response,7 she describes the circumstances under which she registered the disputed domain name:

Respondent received a special offer from a Domain Registration company offering good prices for adding new names. Respondent selected three domains with the word(s) Mahjongg (various spellings) as she had a direct interest in having these words in the URL due to the nature of her business! Respondent did not register URLs similar to any other competition, and this was coincidence that Complainant had started filing procedure before this. Respondent has no malice towards this Complainant and was in fact a past customer of “Mah Jongg Maven” (NOT “The” Mahjongg Maven) before Respondent opened her own business.

In these circumstances Respondent’s knowing use of a competitor’s mark cannot confer any legitimate interest in the phrase “mah jongg maven” for purposes of the Policy. With such a claim removed from this proceeding, Respondent’s claim of rights or legitimate interests depends upon her belief that Complainant’s mark is invalid or unenforceable, or not available under the Policy. Since the Panel has rejected that claim, it follows that any assertion of rights or legitimate interests in the disputed domain name must also be rejected.

Just adding some food for thought. But I'm sure you ain't that foolish.

Some days, I just feel psychic...

How about running a psychic domain name-trademark hotline?

 

[jberryhill]

How about running a psychic domain name-trademark hotline?

D'jever wonder why those psychic telephone chat lines don't call YOU?

The date is from about 4-5 months ago.

Incidentally, the deadline for responding to the action is 6 months from the date it was sent. So, if the action issued 5 months ago, sit on your hands for a month and see whether the applicant abandons the application by not responding.

 

[rcade]

I checked the trademark office again and there is now a trademark that was filed mid-2006, perhaps 6 months after my purchase of the name.

Does the trademark application claim a date of first use prior to your registration of the domain? If not, it could be helpful to you -- since the trademark application is, in effect, proof that it was not used by that holder in commerce prior to the application date.

 

[domain_investor]

Does the trademark application claim a date of first use prior to your registration of the domain? If not, it could be helpful to you -- since the trademark application is, in effect, proof that it was not used by that holder in commerce prior to the application date.

First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

Can I assume "Not Available" means not given.

 

[Brett Lewis]

Can I assume "Not Available" means not given.

That is a fair assumption to make and could even be one basis for the Office Action. As far as you possessing trademark rights in the domain name, you can obtain trademark rights only through actual use of the mark in commerce, or by filing an intent to use application with the PTO and later making use of it in commerce in an unrelated field or class to that proposed by the other party. If you have not made use of the domain name, its registration, alone, would not serve as a legitimate basis for a cancellation proceeding.

As to your rights, as against the other guy, from what you wrote, it looks like you did everything right. Still, now that you know about the other parties' alleged trademark rights, just be careful what you say and how you say it. Given the facts that you did your diligence, registered first, etc., you should be fine, but an overly aggressive third party can waste a lot of your time and money if you are not careful.

 

[Dave Zan]

Given the facts that you did your diligence, registered first, etc., you should be fine, but an overly aggressive third party can waste a lot of your time and money if you are not careful.

In short, don't leave your footprints in the sand.