Hi, I operate the domain [removed] and today I got an email from the owner of [removed] claiming to own a trademark on the term [removed] and requesting me to transfer my domain to him etc (the usual).. The problem now, the US trademark search engine at http://www.uspto.gov/main/trademarks.htm doesn't return any results on [removed] or related / similar terms. Am I right to assume that this means he does not have a US trademark and might just try to bully me into giving out my domain? What do you think or do you have suggestions what I should do? I planned to just mail them I couldn't find information on their trademark and asking them to prove their claims first...
I would certainly be careful there. If they really want to pursue it, they can still pull out first use. Of course, that assumes that they did use it first. If you used it first, you could technically turn it back on them. I would ask them for proof of the trademark. I know that some states allow trademarking within the state. I doubt that that trademark would hold a lot of weight outside of that state though.
Ok thanks, I'll just send the email and see how they react. I doubt they would or could really take it to court as the company seems to be very small and they didn't even take a lawyer to send a letter, the CEO just did it himself... Does someone know if my location (Germany, not US) does change the situation? Wouldn't they be required to sue me in Germany?
No you are not correct. One can have the legal rights to exclusive use of a tradmark without registering it with the USPTO. That is not to say you don't also have the right to you use, it. I am just commenting on your conclusion that if there is no registration at the uspto.gov website, that he has no trademark. That conclusion is incorrect.
Thanks but could you maybe explain in which case someone would have the "legal rights to exclusive use of a tradmark" without registering it? And in which case would I have the right to use it as well?
1. Registration is not a requirment to protect a trademark. Trademarks are based on a race to the marketplace. The first person to use the mark in commerce has the strongest right to use the mark. 2. There are states that offer trademark registration, and that would not show on the USPTO website. 3. See the comments below from the USPTO website. Is registration of my mark required? No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g., * constructive notice to the public of the registrant's claim of ownership of the mark; * a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; * the ability to bring an action concerning the mark in federal court; * the use of the U.S registration as a basis to obtain registration in foreign countries; and * the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods. When can I use the trademark symbols TM, SM and ®? Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration. http://www.uspto.gov/web/offices/tac/doc/basic/register.htm
I've noticed 2 common "myths" some people seem to have about trademarks: 1. Some think trademarks have to be registered. 2. Some think unregistered trademarks must have the letters TM to show it's being used as such. Believe it or not, neither one have to be. At least in the US. In any case, Lunatic, the other party has 2 options: either sue in Court under the US Anticybersquatting Consumer Protection Act (ACPA) or file a Uniform Dispute Resolution Policy (UDRP) claim at one of its accredited providers. But between the 2 of them, many trademark holders find the latter option much cheaper, faster, and more convenient, even though it doesn't grant monetary relief. If you aim to defend your rights to this, then seek legal advice from a licensed experienced professional to review all available facts. And I'd take the domain name off your post if I were you. Good luck on making the right decision.
Thanks to both of you. I've done a bit of reading and you're right... trademarks don't have to be registered, however as I see it only if... - it was used first - it is popular and connected with the particular service by consumers. I'm not sure if either is the case here... how would you decide who used a name first with domain names? Just by the first registration date? Because although their domain was registered earlier it looks as if it changed the owner very often and was used in different manners before becoming a competitor to my site... -- And if an admin sees this can he please remove the domains and the company name from the first post? It seems I can't edit it anymore.. Thanks!
In the US at the very least, you either use a term as a trademark or not. The real challenge is to demonstrate that, which as you'd imagine won't be easy if it's not registered and eventually approved by the issuing office. However, a domain name's registration date only indicates when it was taken. A domain name registration doesn't bestow intellectual property rights in any way unless otherwise stated, which it currently isn't. How to do that is the party's problem. I won't go into detail how since it can vary from country to country, nor would you want me giving them any hint if they so happen to read this.
The company is too small to cause any harm to you, do not even reply to his email, just mark it as spam. You can also forward this to abuse@the companys hosting site
Using the engine at the website isn't a complete trademark search. It's just a starting point. The fact that they didn't come up can mean very little.
Are you in the same niche as the other website? If not then I doubt you have anything to worry about. If you are... then well you do.
Well, unfortunatelly I am in the same niche. Not only that but the sites have exactly the same concept and are even using the same script (pligg)... Because of that I suppose they did probably start their site after mine (or even copied my concept), found out about my site at the official site of the script and are now trying to beat me as a competitor by using legal means.
oh no............... call them and say i will not give this uberness to anyone. Its my uber site, i like it. Then continue to tell them that you have an army of inhouse lawyers and you are sueing them for sexual harrasment if they don't stop. For me it works every time, its fking fullproof method. You see sexual harrasment is the most feared law term common people know, they don't connect it to the actual context, but when they hear it they will go "oh no, what will my wife say if i'm convicted of sexual harrasment". Trust me this works. Sir. Tuuno Murhapuro
Interesting. And I guess you're prepared to donate to the OP's legal fund if he or she get sued despite what you just said? Then again, the OP (or anyone else for that matter) would do well to avoid a post like that and seek professional advice from a licensed experienced pro.
Maybe it's one of the dodgy Trademark claims from the .eu fiasco and they are just chancing it by trying to grab a .com?
UPDATE: They have now written again and are threatening to file an ICANN dispute claim tomorrow. They are also threatening to sue me in the US if their claim would be successful. Can someone please tell me how this affects me if I'm in Germany? Can a US court do me any "harm" / convict me?
Is this some individual sending you an email? I would not personally put as much weight behind that as I would if it were an attorney sending a letter to your house, which I would assume is a more probable course of action in the event of a trademark dispute. If he is representing himself and not able to hire an attorney, can he really afford to pay a $1500 dispute fee with ICANN? If you have made a reasonable request for proof of trademark and he replied with threats instead of evidence, I would have a hard time believing him, but that's just me.
One very good attorney who specializes in this gave me this scenario. If the trademark holder sues in Court and wins (especially if you don't reply at all), then their next challenge is to somehow enforce that decision under any agreement between the US and whatever that country is. One can imagine it can be potentially difficult securing monetary damages from the defendant if s/he's in a country where they and the US don't see eye to eye. If they proceed with the UDRP decision and you don't reply, the worst result is losing the domain name without you paying a dime. You don't necessarily need an attorney to reply to the UDRP, though retaining a good one is never a bad idea. Just expect the worst and get ready for it. Keep an eye on it if need be.
There was a recent case where some company sued Spamhaus (who is in the UK) for wrongfully including their site on their list of spammers. A US court ruled with the company and order Spamhaus to remove it from the list an pay some huge dollar amount in damages. You know what Spamhaus did? Absolutely nothing. Being in the UK they are not subject to US laws, courts, rulings. The US has no jurisdiction whatsoever if you live in Germany. If the guy sued you in Germany, maybe he'd have a shot, even if his TM is only in the US, it could still be covered under the Madrid Protocol, which Germany is a subscribing member. So you're looking at this guy not only suing you, but doing it half way across the world, which just doesn't seem likely. The worst that could happen is he'll file a UDRP and you might lose the domain. It definitely sounds like a scare tactic and until he gives you proof that he has a TM and that he was using it before you, I wouldn't waste your worrying about it.