TM question regarding dates

[seeker]

I am in the following situation.

I'll keep it simle by using 'mydomain.com'

Lets say I registered 'MYDOMAIN.COM' in 2002
it is a 2 word generic domain.

in 2005, a company filed for a TM' on 'MY DOMAIN' (seperated by a space), and it became accepted late 2005, with first use early 2006.

Now, unless I am psychic, there is no way on Earth I could have known that 3 years later, a company would TM the term.

DO I have to give them the domain even though I regged it 3 years prior to their TM?

these are 2 generic words put together, nothing famous or remotely popular.

Thank you.

 

[Johnn]

It's all about "money talk"

1. How big is the company?

2. Can you afford a lawyer?

 

[seeker]

the company is small, and I can afford a lawyer. But my point is am I obligated to give it away?
so If I reg a name today called flowerarrangements.com, and 3 years on, a company TMS that name, do I owe them the domain?

 

[Johnn]

If the company is small, I would ignore them.

I don't think they will file. The worse scenerio is you lose the name but not now.

Good luck!

 

[NYdomainer]

You can try getting TM for 'MYDOMAIN.COM'.
It's done all the time.
Good luck!

 

[smashfactory]

yes- did the trademark "mydomain.com" ? can you do that?

 

[seeker]

mmm, yes I guess I could do that. They trademarked 'MY DOMAIN' (in this example). I have mydomain.com.
still though, is it necessary? I mean the domain predates the TM by 3 years.

 

[Dave Zan]

DO I have to give them the domain even though I regged it 3 years prior to their TM?

Unless you want to avoid a potential hassle, you're generous, or they haven't
contacted you, what for?

 

[seeker]

they have contacted me and made a lowball offer.

 

[dnalias]

no case.

i would not reply.

 

[Onward]

Well, the issue really deals with 1st use.

If this company has been using "My Domain" in commerce before you regged..and they can prove it...they may be able to get it. They do not have to of applied for a TM though.

 

[dnalias]

Well, the issue really deals with 1st use.

If this company has been using "My Domain" in commerce before you regged..and they can prove it...they may be able to get it. They do not have to of applied for a TM though.

true, but i still would not reply.

 

[Brett Lewis]

As a general rule, unless a party claiming trademark rights in a dictionary word domain was using the term or a confusingly similar term in commerce prior to the date when you registered the domain, and used the term widely enough in commerce to attain secondary meaning (i.e., the public came to associate the mark with particular goods or services), you would have superior rights to the domain name. You registering a trademark now would not affect your rights, vis a vis the complaining party. Also, to maintain a trademark registration, you would need to make actual use of the domain name, although you could start by filing an intent-to-use application.

 

[JRBHosting]

Word of advice, DON'T MAKE THEM A COUNTER OFFER. If you do, they may just come after you.

Jason