Trademark issues

On a Sunday afternoon, some guy emails me out of the blue to threaten me with trademark violation. My domain name is in trademark violation. I asked for proof, and none was provided. I was threatened with a lawyer.

Well I'm not a 3rd world basement dwelling computer geek. The threat does not scare me. The site in question has changed hands numerous times in the last 12 years. The content has changed significantly in the last several years. The domain whois - same thing. And the site is so obviously made for Adsense it made me laugh.

But I happened to check the US Trademark site and there is, in fact, a trademark that resembles my domain name. HOWEVER, the trademark did not exist prior to May 9, 2009. And I can prove my site and my site content did exist prior to that date. At least a good 6 months prior.

So now what? Joe Blow gets preferencial treatment because he paid for a US Trademark AFTER my domain name and site was created and developed - and I lose my site? I think not.

p.s I am a Canadian citizen - the domain in question is registered in the US and is physically hosted in the US.

What are your thoughts?

 

The trademark registration date is not the determining factor - it's the date of first usage. Was May 9, 2009 the date of the registration, or the date of first use? The are two very different things. Ownership change doesn't make a difference if goodwill was transferred. If you check the archives, what is the first date you can see content on the other site that relates to the trademark classification? Did this person operate a business under this name before they owned or had content on the domain? It will likely come down to which one of you can prove first usage of the mark. This doesn't have to be the domain use, only use of the mark.

 

They registered the mark May 9, 2009. Their site did indeed exist prior to my opening my site. I have not, and did not plan to claim any mark. I bought a domain name, put some content on it, and let it sit.

If this person claimed they used this "mark" prior to my using it, they get preference? Even if there was no registration of said mark? Simply by putting content on a website and claiming it was a trademark is sufficient?

Ludicrous! My site has a few hundred pages of recipes! And their site is a "made for adsense" site on diets. It's not a business. They do not sell anything. They have google adsense ads x3 per page!

That doesn't work with copyright, why with trademarks? Sure I can publish something and SAY it is copywritten. Technically it is. IF I can prove original ownership or the original document.

 

So what if I owned a domain name for 10 some years. Someone out of the blue purchases a similar domain name and my Google adsense income starts to decline. I am not a business - I otherwise cannot stop this other site from existing.

So I go trademark the words in the domain name and tell the other site to cease and desist - remove their content.

Seems to me that's what has happened.

If that's the case, I could go after all the sites that start up after mine with similar domain names. I'll just go blow a bunch of money on US Trademarks and viola, have a monopoly party!

 

You do not need to register a trademark in the US. That is a common mistake people make. It's called a common law trademark - which basically means you just have to be the first person to use it in a particular type of usage (classification). A trademark is not usually for a domain, it is for a mark (trade name) - which means if someone had a business selling product out of their house - they can establish rights to a name - and that right can extend to a domain name, even if they never had a website.

For instance, Joe had a diet business operating out of their house and sold to people in a bunch of states. His business was called "purple elephants" and was established a year ago. Tom owned a domain called "purpleelephants.com" for the last 10 years. He either never used it, or used it to sell stuffed animals. Tom decides he now wants to use the domain he has owned for 10 years for something diet related. That's trademark infringement - Joe was using the name for diets before them. Joe could file a URDP or lawsuit and likely take the domain Tom has owned for 10 years.

Now that you hopefully understand that the trademark registration date (most marks will list the date of first use, which can predate the filing date by years) isn't the determining factor, it's going to come down to who was using the mark for diet related business first. The fact that it doesn't sell anything and only runs adsense isn't likely to be a factor.

Trademark litigation is very expensive. If this person decides to sue you, be prepared to spend tens of thousands or more in legal fees to defend your rights to it. If you win, you will not likely be awarded legal fees. A registered trademark holder can seek treble their legal costs (although it is not often granted).

If this trademark has been granted, you can file to have it canceled as long as it is within 5 years. It's a somewhat expensive process (maybe $5k to $10k) and you should consult with an IP attorney.

 

I'm aghast. Honestly. If Tom owned "purpleelephants.com" for 10 years and spent 10 years investing time and money - he loses the site simply because some other guy suddenly claims trademark. Trademark litigation does not factor in virtual real estate! That being the property a person owns in a website.

So I could have sunk hundreds of thousands of dollars into my site and still lose it simply because Joe had a business selling diet bars out of his house without my ever being able to even GUESS to know about it.

So what's the moral of the story here? Shall I investigate, legally, every single domain name in every fathomable way possible before I ever purchase it? How can that help? Joe comes along 10 years later and says oh, you're in trademark violation and I now want you to remove that site. How could I possibly know? There is no way.

All over a few google adsense pennies. Laughable. I'm still in shock.

What I do know is that good karma brings good karma. And bad.. well, it tends to work 3 fold. This guy can sue my ass sideways and never get a penny. I think I'll redirect the site somewhere nice.

 

Read my post carefully. If the owner of "purpleelephants" had used the domain for something diet related before "Joe" then he is fine - in fact, he would have an infringement claim himself. What you can't do is have a domain with no usage, and then decide to change usage or use it in a manner than conflicts with someone's prior usage.

What if "Joe" had a little coffee shop called "starbucks" and all of a sudden some big company started a national chain called "starbucks" and said "we didn't know about some little nothing coffee shop - we came up with the name ourselves - too bad for Joe? BEFORE you register a domain, it is YOUR responsibility to check for existing usage. Granted this isn't easy and even paying for a search (couple of hundred) doesn't guarantee you won't have problems - but it will eliminate 99% of your risk.

You have to actually have usage to establish rights - you can't register "purpleelephants.com" and park it waiting for someone to come along so you can sue them for infringement. A trademark usually (famous and coined marks are different) only protects a single usage and doesn't give exclusive ownership to a name. "purpleelephants.com" could be used for almost anything else other than a diet related site.

If this other person wasn't using the name for something diet related PRIOR to yourself, then you have first usage rights. I'm not sure of your situation, but generally a trademark filer isn't going to contact someone like yourself unless they could prove they were using the mark and usage before you.

 

This person was using their domain for diet related content, unbeknownst to me, years prior to my purchasing and using a similar domain name (only different by a hyphen between the 2 words).

My site had (I deleted the whole darn thing) a few hundred pages of recipes. That's it, that's all. Recipes. His site has content about diets, mostly articles about different types of diets etc - it's an affiliate marketing site. NO recipes I saw. It was not a recipe database, as my site was.

I knew I wasn't in violation. I didn't know how to articulate it. I knew he was taking advantage of me in his having a trademark. My content was not in voilation - however, it was SIMILAR enough for him to be a nit picking jerk. Raising a stink because he could. And THAT is what got my hackles up. The content on my site was in no way similar to his. My recipes weren't even diet or low calorie lol. No way related at all. The ONLY thing similar to his site and mine was the domain name itself. Period. That's it, that's all. But he got what he wanted on a what if he sues me and wins threat. And won.

IF my site was actively being developed (I hadn't worked on it in months) and had significant backlinks and PR I would have fought tooth and nail. I am no 3rd world basement dwelling geek. Insult to injury, his site is obviously made for Adsense (3 instances of Adsense per page) and affiliate marketing - yes that's my focus too. IF this guy is doing business, it's not by selling goods or services off that site. That site's sole purpose is to collect affiliate monies. And that rankles me.

I have a mind to purchase a domain name (long tail keyword rich) and really give him a go for his money. No infringment on his silly trademark, just a solid smack down with knowledge and expertise. I know that niche blind and backwards. I simply have TOO many sites too work on at once, I'm sure you know how that goes. Diet sites are not my focus atm. But I may have been inspired.

And yes, I have learned a lesson here. Not so much to do more research prior to buying domain names, but to pay a hell of a lot closer attention to the competition and make sure I have every intent on going through with what I start. You betcha.

 

I understand your situation, however, you don't need to agree with trademark laws, but understand them. From what you have stated, this other person likely had a very good claim for trademark infringement and you would have likely lost had you chosen to fight it. The usage doesn't have to be exact, only related - and both were food related. If this other person had taken you to court and won, you would have been out six figures, maybe more if you had appealed a decision, even if the court had not awarded them treble legal fees for infringement upon a registered trademark (a hyphen isn't going to make a difference). It would seem that if you had purchased the same domain name only adding the hyphen, you were aware of the existing site - at least that is how it would look in court.

A good trademark search will run a few hundred dollars and should be done - especially if you are going to invest significant time and money. You can just transfer the content to another domain name that isn't infringing. Some large companies would have just sued you seeking damages and not even given you the option of not using the domain.

 

Interesting case here, one of many:

http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0481.html

 

If this helps somewhat, some lawyers I know tell me, in their experience, that
people who don't send "proof" or what-not tend to not have any enforceable
claims. It essentially boils down to their demonstrating trademark rights to the
term/s and showing how you're (possibly) infringing it.

As mjewel explained, trademarks can be established by use in commerce. The
registered TMs you see in places like USPTO can give more benefits than just
common law ones, but people aren't necessarily required to file registrations
to prove trademark rights.

And if you think that person's "use" doesn't qualify as a trademark, there's a
certain site called Google that doesn't really show any original content other
than to display ads. So does Yahoo, I think, yet both have trademarks.

Meanwhile, you might want to consult an attorney if you really want to keep
the domain and fight off the other person's claims.

 

I don't want to keep the domain. It's a waste of my time. The issue I HAD was the this Joe Blow's affiliate marketing site full of google adsense and affiliate links decided to raise his pimp hand because he could. NOT because my site was any kind of threat to trademark or brand. There was no real threat there for me at any time.

Like I said, lesson learned. Not about the law, which I think is incredibly WEAK where the internet and intellectual property rights are involved - and I've been online doing websites and SEO for some 10 years now. But that I should cover my own ass on *every single site* I own just in case another Joe Blow decides he wants to raise his pimp hand.