I have a site called highrankingseo.net that is legally incorporated in the state of Florida. Now, many of you probably know Jill Whalen of HighRankings.com. Recently she emailed my partner and told him that we were infringing on her TM (which is actually a service mark). I already know the answer, butI would like to know if anyone here knows if this is TM infringement and if it holds any merit what so ever. Thanks.
If you've already consulted an IP Attorney, I don't see the point of asking for answers from random strangers on this forum. You'll get a lot of people just guessing and saying that you definitely are OK (no matter what the merits of your case), which doesn't really help you. IANAL, but I do know that trademark infringement depends on a number of factors, including who was doing business under the mark first, likelihood of confusion between the marks, type of services the mark covers etc. The answer to whether her case has merit is "it depends". If the URL is important to you, you'll only take the advice of a professional.
The name sounds very descriptive to me. Personally, if it were my domain, I would not be too worried. That being said, I am not familiar with either of the sites and am just going on the domain names alone.
It appears they have been using the mark since 2000 - the fact that you are incorporated doesn't mean anything unless you were using the mark prior to 2000. The USPTO did assign the mark and it would appear your usage is similar or the same: HIGH RANKINGS Goods and Services IC 035. US 100 101 102. G & S: Business marketing consultation in the nature of website marketing and marketing strategies using search engine optimization. FIRST USE: 20000100. FIRST USE IN COMMERCE: 20000100 I think they certainly have a case for infringement. Your argument would be that your usage is descriptive. They could argue that their usage has acquired a secondary meaning. I think that it's really going to depend on who is willing to spend the most amount of money if they decide to sue you. Cases like this can easily rack up six figure costs in legal fees. You should really consult an IP attorney.
If it's trademarked, you're screwed. If they have more money than you, don't think about legal issues here. I had the word 'mini' in one of my domain and I had to cease it by BMW for their Mini Cooper. All and every domain with the word 'mini' not owned by BMW are infringing. Cooper is not trademarked though, as per BMW !!!! My site had no relations with cars, of any kind... Before reg a domain, check all TM going with it
This is just your misunderstanding of the law. The do not own the rights to the term "mini" in every circumstance and certainly do not when not related to cars or their registered mark. There are numerous products and companies that use the term mini in their own trademarks. At quick glance there appear to be over 1500 registered trademarks that use the term "mini". There absolutely are registered trademarks in the name "mini cooper" Word Mark MINI COOPER Goods and Services IC 025. US 022 039. G & S: Jackets, caps, T-shirts IC 028. US 022 023 038 050. G & S: Scale model vehicles; toy cars Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Trademark Search Facility Classification Code SHAPES-MISC Miscellaneous shaped designs Serial Number 79040913 Filing Date December 21, 2006 Current Filing Basis 66A Original Filing Basis 66A Published for Opposition April 8, 2008 Registration Number 3454079 International Registration Number 0707800 Registration Date June 24, 2008 Owner (REGISTRANT) Bayerische Motoren Werke Aktiengesellschaft JOINT STOCK COMPANY FED REP GERMANY Petuelring 130 80809 München FED REP GERMANY Prior Registrations 2376477;2557534 Description of Mark Color is not claimed as a feature of the mark. Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE Apple seems to do fine selling their Mac Mini as do many other companies selling mini related products. http://www.apple.com/macmini/ http://www.miniclip.com/ http://www.minicom.com/ http://www.x-mini.com/ Anyway, it should be pretty clear that the use of the term mini is most certainly permissible and legal under many circumstances.
That's exactly correct. A Trademark is only protected within a similar field or usage. For example, MLB (Major League Baseball) is a trademark that has protection in everything baseball related. However, you can set up a site called MLBINC.com and have it mean (Martin L Brooks Incorporated) and that would be perfectly legal and not infringe on any trademarks so long as that corporation didn't deal with anything baseball related. Just like browntwn pointed out, there is Mini Cooper and Mac Mini - no trademark problems because neither is related to one another.
Even if mine wasn't a dot com, I don't want to buy a domain that will be taken from me by BMW's lawyers...
They may request it but they can't simply take it if you don't give it to them. I think there is near zero chance of losing a domain called minitrains.com for a site based on mini trains in a legal forum. I would feel very confident defending that particular name.
they should have never been given that mark, but they have it. Someone at the TM office was asleep. It is "merely descriptive."