Hey, I'm wasn't quite sure where to turn to when I got an email saying that they have a pending TM that covers my domain. Heres a copy of the email: I have not replied to him as I wanted to seek help, I spoke to a friend and after calming me sent me here to get some proper advice. Basically, I think this is rubbish. But my worries were "what if because he's owned several fused' domains for longer than I've owned fusedhosting" And my domain/business is unintentionally competing against his site/service so he could be pretty annoyed. Then again, it's taken him a while to get this far. Well, anyway, now I've come to my sense I wanted some advice on what to say back that wont irritate the situation as he has no right over my domain, he gives me no proof of a pending TM, its not currently in the TM database. Can anyone give me any advice on the best course of action? What to reply with? Fact is, I don't want to give up the domain, its something I've worked on a lot, its got a fair few back links and is 'predicted pr4/5 (i know they aren't reliable)' and I'd rather not sell or re-brand. Thanks in advance to all, Jack.
If it's not trademarked, then you should be safe. The real problem is that he could possibly claim that you were copying him. He registered fusednetwork.com on August 3rd 2001, and you registered fusedhosting.net on the 20th of December (if I'm reading whois right). They also both offer hosting too, which might make it rough. The bonus is that they look nothing like each other and I really doesn't look like you are trying to copy him. I would think that you'd be able to hold onto the domain if he actually tried to fight for it.
Get a TM (Trademark) Lawyer and see what you can do. Usually (I believe) if you've had the domain long and got it before the other company applied for the TM then it's legally yours and they can't TM it if you had it first. However, I would atleast look into it because sometimes these are scams and are just to get the domain. I would get a lawyer, let them know to talk to your lawyer about it. If it is a scam this will usually scare them away, if not they might be willing to make a deal rather than take it to court and if it's really important the lawyer fees will be worth it Just my 2 cents
1. He says Pending trademark. That would mean that its not trademarked now. 2. Is he going to buy fuse.tv as well? 3. If he had legal rights over the name, I don't think he would want to buy it off of you. 4. Even if he did trademark Fused Network, your domain is fusedhosting so it's different. He doesn't own the word "fused" in every capacity. I would offer to sell it for $100,000 and if he buys, then great for you! If not, then just keep your domain. I don't see how he has any legal rights over it.
Thank you for your quick replies, I'm glad that it's positive at least. I wouldn't let it go as far as lawyers, that seems too much for a small domain, but I won't chicken out. Thanks again, Jack. p.s. what about investigating a TM for myself? How much would I be looking at and the benefits it could - like to stop these emails from happening again? edit: Thanks sitefever, Similar on what I was thinking after I had calmed down (/gotten over initial shock).
I would request documentation from him as to his rights and usage.... You may find that by offering hosting he may be infringing on you.
Get a trademark lawyer. I know I atleast I think many users over at DNjournal know of a few and can point you in the right direction to one. As far as sitefever says, would be impossible since it is a cable network music station. A competitor against MTV. Plays alot of up and coming indie bands as well as mainstream. So he would struggle to say the least with anything "fused" in it.
The party in question might not have a registered trademark. But that won't stop them from trying to demonstrate common law trademark rights. While a google search can give you clues, the catch with the statement up is that it isn't always visible if someone is using the term as a trademark or not. One possible hint is if the party has been using the term in commerce for quite a long period of time. From the few details posted here, it's quite possible they've established such. Of course, the onus is on them to demonstrate when they started using it in commerce. Bottom line to the OP: know who you're dealing with. Talk to an attorney who specializes on this if need be, then weigh your risks and rewards carefully.
It's your domain name. Maybe ask him what he'd pay for it... One can sense in his email, he needs this domain desperately... Don't give it. He sounds like he is obressing you or letting you know that you don't have any option... If you don't want to sell, then maybe you should get a trandmark lawyer.. Update us!
I once had a similar issue and trademarked my domain as a result, not cheap!! HOWEVER, I had correspondence with the other party before I got a TM lawyer involved and the Lawyer said that the one thing I should NOT do in any proceedings is to ask them how much they were willing to pay as this could demonstrate that I had possibly regisitered the domain with a view to holding the other said party to ransom over the name. Best bit of advise given here is to consult a lawyer or a tleast some legal representative. Its funny, a response from a lawyer to the email type of email you received will deter 90% of such cases.
It says your site was registered in october. How long does a trademark stay in "pending" status. I mean, surely less than 10 months. Im sure, that if he made a trademark AFTER you registered the site, then it's possible that he wont be able to take the site.
All you have to do is check if the domain was registered before he applied for the TM, if thats the case you are safe and you have nothing to worry about.
Hades: Trademarks can take from a year to several years to change from pending to registered status. Pending trademarks are not in the general trademark search. Pending trademarks are assigned a number that can be looked up at http://tarr.uspto.gov/ The process of applying for a trademark to getting pending status can take the better part of a year. Trapped: That is not the case at all. While it is more beneficial to have registered the domain prior to the application of the trademark, it is not absolute protection. A trademark does not have to be registered to be a trademark and have some protection. Not only that, but there are other factors at play when this gets looked at.
Dont get a trademark lawyer until you have too. they are DAMN expensive !!! retainers can be anywhere from 3k to 20k. My guy was around 15k. Sueing someone is an expensive task in itself they know that too because the above cost relate to them as well. Its most likely if they have an issue (esp if its a SMALL SMALL dot com company) they will try and resolve through ICANN first. I personnally think the guy is just giving you mafia treatment. You should note. If they were really really serious the admin guy would never have contacted you.. it would have been straight legal all the way.
eastwood, Taking the time out of my day to contact Jack rather than going directly to the lawyers was a method of saving myself funds as well. I have better use for them than tossing them away on legal fees upfront. I've always found that solutions can be arranged in most cases without getting lawyers involved. Don't mistake that for lack of 'seriousness' when it comes to my brand & will go to great lengths to protect it.
well i stand corrected.. from a guy in torronto.. my post was related the to experiences ive had. thanks
Based on the advice provided so far, yes I might a be a bit biased but since we're all tossing out recommendations: I'd recommend taking my offer & getting some free branding in the process. Your current site is lackluster at best & attempting to compete with the SEO I'm putting in place to return the 'fused hosting' related keywords to their rightful owners will only miserably fail. Come to the dark side!