Ok, what do you guys think on this one: I got an email late last night from a guy in Israel: I, of course, refused and contacted my lawyer And I got this back And responded From what I've read I'm in the right on this one. My product has been out for a few weeks and has gained support. I don't want to have to change the name. From my understanding, it falls under the "generic" or "descriptive" clauses of this: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#3 My site converts docx files. It is a docx converter. How else can you describe that?... Meaning it wouldn't be enforceable, correct? My lawyer agreed but he's not exactly an expert in IP Law. Thanks
"It is impossible to describe the product without using these words, therefore the trademark is bunk.". That pretty much sums it up. From my own experience the TM (I cannot find it either anyway) is too generic. I am not a lawyer, but so far, you seem to be in the right. Always consult an IP lawyer.
I see his trademark when I go to USPTO.gov and search for DOCXCONVERTER. Here is what I see: Word Mark DOCXCONVERTER Goods and Services IC 009. US 021 023 026 036 038. G & S: Computer software for translating files from the Microsoft Word 2007 format to files formatted by an older format; Computer software for translating files from the Microsoft Word 2007 format to files formatted by an older format that may be downloaded from a global computer network Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Design Search Code Serial Number 77003255 Filing Date September 20, 2006 Current Filing Basis 1B Original Filing Basis 1B Owner (APPLICANT) Panergy, LTD CORPORATION ISRAEL 30 Trumpeldor Str. Ramat Hasharon ISRAEL 47264 Attorney of Record Bradley Sniderman Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE
All I see is "Sorry, no results found for "DOCXCONVERTER". Try entering fewer or broader query terms." Edit: Nevermind, I found it. Regardless, it's unenforceable, right?
I don't offer legal advice, but it seems like they have registered it first, used it first, and inspite of your claim it is a common term, Google shows very few results for that term and, in fact, suggests a much more generic search. http://www.google.com/search?hl=en&q=DOCXCONVERTER&btnG=Google+Search They took a pretty friendly approach with you. And while you have a 'few weeks' invested in that name. I would ask them what suggestions they have. Perhaps they would pay you a small sum so you could buy a new domain and some money so you can advertise your new name and not lose the progress you have made so far. Up to you.
True, I agree the guy has been very amicable. But a name-change for me at this point would be almost impossible; I have a software application released that has the domain name embedded in it. Plus tons of backlinks, etc. The thing is, it's a microsoft format which I'm sure they've trademarked or copyrighted or something of that sort (.docx) and convert is what it does. It shouldn't be trademarkable. It's like an eye doctor trademarking the phrase "eye exam" It is just too generic. I'm in the process of contacting an IP lawyer now to get his opinion.
"I'm in the process of contacting an IP lawyer now to get his opinion." That is always the best course of action.
Yup, only a licensed experienced IP attorney can answer this for you. I know a couple if you need one. Meanwhile, this Israeli guy's application is new. It isn't officially a trademark yet until USPTO finally approves it, and it could take a long while. You can verify its status: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77003255