Trademark first use for a domain name

[alwaysthinking]

I have actually filed my own trademark applications online for couple of domains in the past. But I never understood 'statement of use'.
Let me explain.
Lets say I have a domain that was registered in 2000. I bought it last year (2008). Now if I file for a trademark, would I say it was first used in 2000 (when it was registered) or 2008, when I bought and launched the website.

Also, are you guys using TLD while filing for TM. I mean are you in your applications putting in 'domainname' or 'domainname.com' or 'domainnamecom'.

Thanks as always.

 

[Theo]

The mark applies to the services or products provided, not the domain itself. That determines the date of first use for the mark; the registration date is not directly related. If there are no services or products associated with the mark yet, you file as "intent to use".

 

[domaingenius]

I have actually filed my own trademark applications online for couple of domains in the past. But I never understood 'statement of use'.
Let me explain.
Lets say I have a domain that was registered in 2000. I bought it last year (2008). Now if I file for a trademark, would I say it was first used in 2000 (when it was registered) or 2008, when I bought and launched the website.

Also, are you guys using TLD while filing for TM. I mean are you in your applications putting in 'domainname' or 'domainname.com' or 'domainnamecom'.

Thanks as always.

In fact I too have made a number of TM applications here in UK. The rules
are pretty much the same in respect of questions you ask;

1. I dont think you have to say when you started using the name,
simply what mark you are, or intend, using. There is no "priority date"
required to apply for a trademark unless you gave applied elsewhere as well.

2. No I dont use the tld as I think they disregard it, at least in UK
they do. You can apply for a series of marks i.e. TEST test and maybe even
add in TEST.com

DG

 

[Theo]

There is a substantial reason why US trade/service mark applications need a date of first use: if you claim prior use, you establish that by providing a specific date (or at least month/year) and provide specimens of such use. If you claim intention to use, you have to go through the updating process as soon as you start using the mark; in this case, the mark's registration is a two-stage process.

 

[alwaysthinking]

To all of the above:
That is exactly what I though and exactly what I did.

Good to clear the to use tld or not tld confusion though.

So let me ask you this, (example but very similar to what I wanna do) if you had a domain like myoranges.com, is there any point in trademarking myoranges so that to protect it from some one like Tropicana strong arming you? (this is just an example, I love tropicana)

 

[britishbulldog]

In fact I too have made a number of TM applications here in UK. The rules
are pretty much the same in respect of questions you ask;

1. I dont think you have to say when you started using the name,
simply what mark you are, or intend, using. There is no "priority date"
required to apply for a trademark unless you gave applied elsewhere as well.

2. No I dont use the tld as I think they disregard it, at least in UK
they do. You can apply for a series of marks i.e. TEST test and maybe even
add in TEST.com

DG

Correct........look at my trademark for britster(.)com for an example

 

[domaingenius]

There is a substantial reason why US trade/service mark applications need a date of first use: if you claim prior use, you establish that by providing a specific date (or at least month/year) and provide specimens of such use. If you claim intention to use, you have to go through the updating process as soon as you start using the mark; in this case, the mark's registration is a two-stage process.

Do you even have to claim "prior use" when you apply for a TM, for sure in the
UK you do not ?. Yes you do of course if your are objecting to someone elses
application but not for when you apply for one. The only time dates of any
kind would be relevant would be either objecting OR if you are claiming a
priority date from lodging an application elsewhere. I can also tell you
something that you may find useful somewhere along the line, which I
didnt know until something happened recently, and that is that no matter
what happens to your application if you put in "an" application for a
trademark in say lebanon for XYZ the date that you filed that application
gives you a priority date for your application in say Europe .ie. It does not
matter that your application in Lebanon had not chance in hell of
succeeding it still gives you a priortity date.

DG

 

[jberryhill]

In fact I too have made a number of TM applications here in UK. The rules
are pretty much the same in respect of questions you ask;

1. I dont think you have to say when you started using the name,
simply what mark you are, or intend, using. There is no "priority date"
required to apply for a trademark unless you gave applied elsewhere as well.

No, the rules are not the same, and this answer is 100% wrong. A date of first use is required for a 1A application, and a statement of use including a date of first use will be required for an allowed 1B application.

The OP is well enough beyond the point of confused, however, that a correct answer is not likely to be helpful in a practical sense.

Do you even have to claim "prior use" when you apply for a TM, for sure in the
UK you do not ?. Yes you do of course if your are objecting to someone elses
application but not for when you apply for one. The only time dates of any
kind would be relevant would be either objecting OR if you are claiming a
priority date from lodging an application elsewhere. I can also tell you
something that you may find useful somewhere along the line, which I
didnt know until something happened recently, and that is that no matter
what happens to your application if you put in "an" application for a
trademark in say lebanon for XYZ the date that you filed that application
gives you a priority date for your application in say Europe .ie. It does not
matter that your application in Lebanon had not chance in hell of
succeeding it still gives you a priortity date.

DG

Date of first use in commerce is a statutory requirement of US applications, and has absolutely nothing to do with priority.

One of the real problems of applying a policy like the UDRP internationally is that some very basic US, UK and European trademark concepts fundamentally differ from each other to the extent that when Europeans and Americans talk about "trademarks" one can wonder whether they are even talking about the same thing.

 

[domaingenius]

No, the rules are not the same, and this answer is 100% wrong. A date of first use is required for a 1A application, and a statement of use including a date of first use will be required for an allowed 1B application.

The OP is well enough beyond the point of confused, however, that a correct answer is not likely to be helpful in a practical sense.



Date of first use in commerce is a statutory requirement of US applications, and has absolutely nothing to do with priority.

One of the real problems of applying a policy like the UDRP internationally is that some very basic US, UK and European trademark concepts fundamentally differ from each other to the extent that when Europeans and Americans talk about "trademarks" one can wonder whether they are even talking about the same thing.

Noted and agreed. Hmm ,maybe I shall put my head down and
get on with my own stuff and forget trying to advise on US laws
that I know nothing about. Now UK laws are a different matter...

DG

 

[britishbulldog]

Noted and agreed. Hmm ,maybe I shall put my head down and
get on with my own stuff and forget trying to advise on US laws
that I know nothing about. Now UK laws are a different matter...

DG

You know what the problem is DG WIPO and UDRP do not take in consideration U.K laws they always seem to go with the U.S laws where say the complaintant is from..........I have lost two cases on U.S laws.

 

[domaingenius]

You know what the problem is DG WIPO and UDRP do not take in consideration U.K laws they always seem to go with the U.S laws where say the complaintant is from..........I have lost two cases on U.S laws.

Agreed BB ,that is why I am now taking the matters to court in UK so
can get a decent decision. Also the problem with WIPO is that most
of the panelists are pro the large corporations as thats were
they make their money, and they'd prefer to screw the domainer
than the large corporation. Also its a self fulling prophesy with WIPO,
the more they rule in complainants favour the more complaints go
to them and the more money they make.

DG