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  1. #1
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    Here's the scenerio...I purchased a domain, a .org, there is a .com with the same name. The .com says it's trademarked but a check with the USTPO shows it isn't. Our ideas with the site are similar but targeted to completely different groups (theirs offers services to business, mine to individuals). If I build my site will the .com have legal grounds to close it?
    If so, what if I put a disclaimer at the top of the page stating there is no affiliation and if your looking for the .com, click here?

  2. #2
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    slbluff,

    Great to see you back! <IMG src=http://www.abestweb.com/smilies/welcome.gif>

    TMs work on a basis of only one thing ...

    DATE OF FIRST USE

    According to precedent, as I have seen and has documented, any .com with (DOF) can overpower any .whatever into relinquishing any .whatever, solely based on true and verifiable DOF, disclaimers won't CYA for beans!

    Drop the domain, get another!

    Just my real world and confirmed <IMG src=http://www.abestweb.com/ubb/icons/icon26.gif>

    Haiko

  3. #3
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    Forgot to add ...

    A TM does NOT need to be filled in the USPTO
    ( http://www.uspto.gov ) to be an identifiable TM! There are what are called Common Law Trademarks (CLTMs) that may overpower any (R) or (R) application ... it boils down to the Date of first use. In this situation it appears that the .com owner has CLTM rights over you ... so get another dom, they are cheap enough!

    Haiko

  4. #4
    Domain Addict / Formerly known as elbowcreek Thomas A. Rice's Avatar
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    What about generic terms? And what if you include .US or .ORG as your name? For example, dogfood.com vs. dogfood.us..... Would dogfood.com really have the right to go after dogfood.us, especially if dogfood.us never used the name without the .us? I could see where someone like travelocity.com would be able to squash travelocity.org because, obviously, there is no such word as travelocity, it is a creation of the first person. So, how about it?

  5. #5
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    elbowcreek,

    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>What about generic terms? <HR></BLOCKQUOTE>

    Generic terms are NOT TMable ... so they are fair game!

    Travelocity, however, is NOT a generic term so they could sue your donkey to high hell, if they choose to with .whatever you choose!

    Haiko

  6. #6
    Domain Addict / Formerly known as elbowcreek Thomas A. Rice's Avatar
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    lol, just making sure - I picked up a jillion .us domains, all of em generic in nature.

  7. #7
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    elbowcreek,

    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>I picked up a jillion .us domains, all of em generic in nature<HR></BLOCKQUOTE>

    Sell some of them or KICK some serious donkey!

    Haiko

  8. #8
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    Thanks Haiko!
    I've been reading TM and Copyright laws all night (seeing cross eyed now). So now it gets to specifics. The TM is on the logo. The whois shows registry to a different company, however, at the bottom of the page is the copyright to a company with the .com name. Seems they've covered all sides. Now, you can't copyright a site, only the information contained in it (that's what I gathered from it anyway, feel free to correct me if I'm wrong). As for the TM on the logo, will that suffice for the wording?

    If my company name is X, my domain is Y. My logo shows the Y wording with the TM. No where else does it state that Y is my TM (so is it just the logo design?). Now, am I to assume the domain name, logo, or both are TM?
    Hmmm....does this make any sense? Think I'm confusing myself! Maybe I should seek legal advice. It's a really great name and to be honest I really had no knowledge of TM laws so didn't know this might be a violation.

  9. #9
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    one more thing...
    In order for the TM laws to be upheld, wouldn't there have to be intent on my part to make money off of their name and reputation?

    Would it help if I just posted the name? Might fall in the generic category.

  10. #10
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    slbuff,

    Whoa!

    A logo may be TMed and the words (eg AbestWeb) while "a best web" are all generic, but used together it is a TM (currently) a Common Law TM for it is not filled with the USPTO.

    If I TM the A in abestweb as a stylized word mark then I have a claim on your .whatever if it resembles your somethingsimiliar[b].[/]whatever! A (C) is for an image (or logo) not a worded phrase.

    PM me for a real and CONFIDENTIAL review of the dom and TM implications.

    Haiko

  11. #11
    Domain Addict / Formerly known as elbowcreek Thomas A. Rice's Avatar
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    sl-
    you didn't, by any chance, reserve abestweb.org, didja???? rotflmao...

  12. #12
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    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>Originally posted by elbowcreek:
    sl-
    you didn't, by any chance, reserve abestweb.org, didja???? rotflmao...
    <HR></BLOCKQUOTE>

    BUSTED!! [img]/infopop/emoticons/icon_wink.gif[/img]

    Thanks bunches Haiko!!! Guess I got carried away up there. :rolleyes:

    [ 05-02-2002: Message edited by: slbuff ]

  13. #13
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    Proactively registering the main "alternate" versions of one's domain name can be cheap insurance against problems -- .com .net, .org, one's own country domain, singular, plural, hyphenated, predictable typos, etc. What would make sense would vary depending on the name, but if one is serious about building and protecting a brand it's something to think about sooner rather than later.

  14. #14
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    Perhaps related:

    http://apnews1.iwon.com/article/20020430/D7J7I5AG0.html

    Personally, I think the Miller beer people are coming across as corporate bullies who should just overlook this (that family has had the site since 1995).

  15. #15
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    You can pretty much Trademark anything simply by putting up the TM notation.

    You then have a certain length of time to file the official trademark with Uncle Sam.

    If you do not file and pay the FEE, you can lose the TM, or Uncle can refuse to give it to you. If someone files over your TM, Then the Date of First use applies.

    You can file for a trademark in any state as well as with the feds. Fee's at the states are much lower. But if you file a TM in say NY, I can file the same one in New Jersey and
    you really can't do much about.

    How ever if you file with the Feds, then you
    overwrite the ability of people to file in youre state, but you DO NOT lose the state trademark.

    Here's the one thing you need to do to secure your TM and establish your DATE OF FIRST USE.

    You need to write a letter on your personal stationary if you personally wish to hold the trademark or on company stationary if your company will hold the trademark.

    This letter should say something to the effect: On xyz date, I (your name), created and first used the following (slogan, name etc) and affixed the TM moniker.

    Sign it and date it and have a witness verifiy it or get it notarized which is better.

    Then make three copies of it and take it to the post office and send them all to yourself
    as a registered letter that you have to sign for.

    When the letters get to you you sign for them and the post office sends you the proof of receipt which has an official DATE on it.

    Now take the letters UN-Opened and put them with your records. You now have an OFFICIAL
    undisputable proof of your date of first useage - you have the letter with the dates in the envelope, you have the registered mail card affixed to the letter which has a date on it, you have the postage cancellation stamp which has a date on it and you have the signed receipt card which has a date on it.

    Should if you need proof and you will if your TM gets challenged whether you register it or not, you simply bring the ONE of the letters to court and open it, in fromt of the judge, and provide the post office stuff as corroborating evidence.

    Game over if your Date of First Use is earlier than your opposition and they can't PROVE they used it first.

    So for about $10, you can protect your butt and TM and save yourself some hassle.

  16. #16
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    Fred,

    Actually, all that does is prove you had an intention on x date, you have to USE the mark in either inter or intrastate commerce to have any claim of ownership.

    There are three types of trademarks (in the US):
    1. Federal (R)s
    2. State
    3. Common Law TMs

    A Federal trademark is the most desired, (protection wise) of all three but and this is a very important but, a CLTM with a prior date of first use in interstate commerce, can blow any Federal TM away any day! CLTM owners can also preclude new Federal Applications from being approved.

    <IMG src=http://www.abestweb.com/ubb/icons/icon26.gif>

    Haiko

  17. #17
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  18. #18
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    There are some other side issues with Trademarks -- first Trademarks are mostly specific to a category. WHen you register a trademark you have to specify the use such as "retailer" or "advertising service", etc. This is why multiple people can use the term "Johnson's" for example on the name of their business.

    For example, "Swansons" is a major brand of frozen foods -- however, you could probably trademark the name Swansons as a truck manufacturor since they are in completely different realms and there is no chance of confusion.

    Exceptions to this rule are super strong trademarks such as "Coca-Cola" -- Coke could argue that their trademark is so well known and so unique that any use would be confusing.

    As for "generic terms" -- people have trademarked generic terms although it is much harder... the key is, once you actually receive a trademark you are in great shape, it is up to the other party to prove why you shouldn't have it. Before you actually receive a trademark, you have to show why you deserve it.

    Another interesting point, the US trademark office no longer considers ".com" as distinctive -- they just disregard it completely. You cannot take a generic term like "soda" and slap on a .com and try to trademark "Soda.com" as a unique term.

    In regards to prior use -- if you purchase a name from someone, you can get their prior use time frame. What that means is that as long as the person you got the name from previously used the name in commerce for a similar purpose to yours, you can use that to your advantage.

    I don't believe you ever have to file for a Trademark, however if you don't, it becomes harder and harder to fight it if someone else gets one. Technically it does go to prior use, but once a third party gets a Trademark on your term, you will have to fight and prove why they don't deserve it. If you had filed beforehand, they will have to prove why you don't deserve it. Bottom line is, if you are really concerned about your trademark it is best to file with the government. Also, as mentioned by another poster, keep all documents to show why you have "prior use". I believe the prior use must be IN COMMERCE... meaning, you cannot just sit on an unused idea for 10 years, never doing anything with it, then spring it on someone. You have to actually be using it and conducting business with it.

    -John

  19. #19
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    @ Fred
    Wow, I have read a lot of your post with most taken with a grain of salt... Please don't take this in an offensive way some of them contain a lot of BS. But a lot of them contain some very good information. Seems to me you know your sheet.

    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>Should if you need proof and you will if your TM gets challenged whether you register it or not, you simply bring the ONE of the letters to court and open it, in fromt of the judge, and provide the post office stuff as corroborating evidence. <HR></BLOCKQUOTE>

    Just had to give you props on this way of CYA'ing yourself. [img]/infopop/emoticons/icon_wink.gif[/img]

  20. #20
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    Thanks for the info everyone!! This should be useful to alot of us. According to Haiko mine is generic and so no worries, however, I believe I'll have mail shortly. [img]/infopop/emoticons/icon_wink.gif[/img]

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