We currently own 6 domains which use a company's trademark in the title. This company is very large, let's just say they're prob in the top5 list for world's largest corporations. LOL They have been in touch with us stating we're diluting their brand name and are demanding we transfer the domains over to them. With that said, the domains we own redirect the user to our e-commerce store which sells the company's product line. Is there a fine line that you cannot use a trademark in a website address? I have seen many websites which contain google, yahoo, etc. etc. in the domain names and have yet to hear of lawsuits resulting. The funny part is we're selling their product line and they are still not fond of this. My thoughts are they want to own this domain since it's a high traffic domain. We're probably pulling in a lot of hits for customers actually trying to access the main company's product line website. They were threatening a lawsuit. Currently they said they'd offer $60.00 per domain, but the revenue we'd bring in from these domains within a year is probably in the high thousands. If they're willing to purchase them, they are more than welcome to. I cannot see a lawsuit resulting form this, but who knows. Does anyone know anything about copyright/trademark use in domain names? Any suggestions? I'm unable to mention the domain names.
Read through a copule related posts, seems like i'm at fault here I guess. Any suggestions what to do? Hand them over? Try to sell them?
Hey i'm back once more, i was doing some research on Google and it seems they would be able to sue for any loss of business. Well... A) You cannot purchase products on their website. They divert you to one of their distributers. B) I am selling their product line. So anyone visiting our domain would in return be purchasing the defending company's products. So technically there is no loss? Opinions?
To protect their trademark, they need to do something. They can't just stand by and have you and others use their trademark, or they risk being told somewhere down the line that they have lost it. Since a big company trademark has a value in the millions if not billions, they can't take that risk, and have to do something. On the other hand, they don't need to put you out of business or have you give them the URLs to protect their mark. You can reach an agreement with them where you agree that it is their mark, that you are not going to infringe it, and that you are allowed to use the mark with their permission. Why would they license you to keep going when they can get a domain worth thousands for a few bucks? Well, the only reason to do it would be if they thought there was a chance they might lose, and run up legal fees in the process. Giving you a license to use the URL protects them on the main, multizillion dollar issue (protecting their trademark) and can lead to a quick solution. You don't always or automatically commit trademark infringement when you use someone else's trademark. There is a multipart test, the most important part of which is risk of confusion. You would want to argue, and would want to make whatever changes you need to make in how the sites are presented, in order to be able to argue that there is no risk of confusion (I'm no expert on trademark law, but I'm guessing that directing straight to your ecommerce site creates more problems and allows for more confusion than other approaches. It might or might work to direct to a landing page where you state in big bold letters that you are not associated with them, have some bland text on their products, and a link to buy). In the real world, what gets worked out can depend a lot on the personality of the lawyer handling this on their side. If he/she is a huge jerk and likes pushing people around, and especially if he/she has a client who will pay $500 an hour from now until the end of time to push you around, my guess is that they won't want anything less than your total surrender. On the other hand, if they are mainly interested in protecting the mark, have a lot of ground to cover and limited resources to spend on this particular project, they might be interested in a quick, friendly and sure way out. To your benefit, the forced domain transfer process is an informal, arbitration type proceeding. You don't necessarily need a lawyer, and they do a pretty good job of laying out the standards applied. Sometimes the little guy even wins. Standard disclaimer - While I am a lawyer, I am not your lawyer, and you need to understand that this is not legal advice to you. These are unresearched, general, quite possibly inaccurate observations on the overall law, and they do not necessarily apply to your situation. If you want legal advice, you need to hire a proper trademark lawyer, and make sure they have the full facts.
raycampbell's post is good advice. In my opinion, and I have spent a lot of money in legal fees on trademark issues and own several Federal Trademarks - from the information you have given, they could sue you for damages and take the domain if they wanted too. If they have an actual registred trademark, they can get treble legal fees. They don't need to offer you anything in the way of compensation because you are infringing upon something they own (they don't have to pay for something they already own), but $60 might be an easy resolution to minimize their legal fees because they don't know your financial situation and even if they were awarded a large sum, collecting it might be impossible if you don't have the money. When someone owns a trademark, they own the complete rights to use that name. Adding words to the trademark does not get around infringement. The fact that you may be doing them a service doesn't matter. You can certainly try to come to some resolution with them, but realize that if they really wanted to take the domain name without paying you anything, and sue for damages and treble legal fees, they could. Whether or not they would go through with it is a guess. The larger the company the more likely they have the financial means to do so. Because you are advertising or talking about their particular product, you really have no argument that it isn't trademark infringement. i.e. is you had a domain with "Amazon" in it and were talking about a river, its different that the same site with content that is related to amazon.com. You might want to consult with an intellectual property rights attorney, but imo they will likely tell you that push comes to shove, you are in a situation where you could lose all the money you have made with the domain and could be forced to pay legal fees for the other side - which can easily run six figures in a drawn out dispute.
I have not caused any damages though. I do not see what they can possibly sue for - although I do understand I am in violation of using their trademark. Our company is a start up company, behind a LLC. If they tried to sue the business would just claim bankrupcy and they woudl be out a lot of money since we would not pay for their attorney fees nor any dollar amount they may win if this did go to court... Just to throw this out there, we own 3MStethoscopes.com and 3MStethoscope.com 3M is the leading stethoscope provider in the market. THe domains were pointing to our mystethoscope.com domain under the 3m products page. Currently we have the domains parked because of what is going on.
The "damages" (in legal terms) are that you used their trademark to produce revenue. Since they have a registered trademark, the court gives them even more rights since they feel a person should at least do a registered trademark search. 3M isn't really interested in making money by suing you. When you own a trademark, you are legally required to go after people using your trademark. If you don't, you can eventually lose the trademark (this happened with Aspirin - a former trademark). Bayer did go after the little guys using their trademark and it became a generic term. While 3M isn't likely to go after you for money, they also have attorney's on retainer and the thought of spending a hundred thousand in legal fees isn't something they would think about twice. A Registered Trademark owner can also just go to ICANN and for a few hundred dollars, file to take the domain away without going to court. Filing bankruptcy is always an option in the event of a large award - obviously, you probably don't want to lose everything that was in or paid for by the company, including the domain name, and the filing alone can cost thousands. You also need to be careful about relying on that strategy because entities can be pierced and officers/owners can be personally held liable in some, although rare cases. My guess is that 3M just wants to protect their million dollar trademark. Before you decide to fight them, you should really consult with an attorney.
Slight correction. It is quite possible for trademarks to be limited geopgraphicly or by market segement. For example, I could run a restaurant in Los Angeles named Joe's Phat Taco'sâ„¢ and someone else, without knowing about my restaurant could have one called Joe's Phat Tacosâ„¢ in Texas. We both would own legal trademarks in our respective localities.
You are talking about a State registration, which isn't what we are talking about. That wouldn't apply with the Internet or a Federally Registered Trademark. "Without Knowing" also isn't a legal argument for usage (you are required to do or pay for a search prior to using a name - the prevailing party is the one who proves first usage). If a resturant only has one location, and since they don't do mail order across state lines, they would have a hard time trying to claim they were damaged by someone in another state using their name. With Federal Trademarks/Servicemarks carry much more weight and are entirely different. With a state filing, you aren't claiming exclusive right to a name or mark. If either of those restaurant's sold a taco sauce on their domain, they could claim infringement and prevent the other from having a website with a similar name. You don't even need to file anything to have exclusive rights on the usage of an internet name.
No, I wasn't talking about any registration (state or federal), just to be first in use in the marketplace, with a â„¢ is enough to afford substantial legal protection in the Unted States for the mark. Obviously to protect a valuable mark and to be nationaly or internationaly protected, one should register their mark, then you get the liitle R instead of the â„¢, with which comes additional protection.
A registered trademark is technically no stronger than one which isn't registered. A registration establishes your usage date, gives the possibility of treble damages, and give uncontestable rights after six years provided no one comes forward and successfully disputes your usuage - but the registration isn't needed to claim rights like you see with a patent. The TM can be used by anyone and doesn't give any legal protection - it only means you are claiming you have right to the name, which may or may not be true. It doesn't matter if you were the first person to use "TM" on the name, it matters who was the first person to use the name.
That is 100% false. It absolutely affords legal protection, and as you said, just not the rights to treble damages or uncontestability. That is hardly no legal protection, it is just a different level. Usually sufficient for a small business who is first testing a mark in commerce and is not sure it has any real value. But using the â„¢ certainly gives the owner more legal protection that not using it. Obviously, the whole point is moot is you never use the mark in commerce, and that is true as well of a registered mark.
If somone got the name in Los Angeles and trademarked it then no one in the country would be permitted to use it. If it was NOT trademarked then yes, a person in another state could use the very same name. First usage... sometimes a DBA... without trademark... only protects a person within the state they are doing business. But a proper trademark protects the owner nation wide... sometimes world wide. Lyte
Well, you're wrong on all points. The TM can be used by anyone and gives NO legal rights to a name. You can't get a registered mark unless it has been used in commerce, so I don't even understand your last statement.
That is a common misconception and completely wrong. This is a quote 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.
My understsanding and research states that "legitmate use" (without trademark) limits your rights. Yes, I can "establish rights in a mark" just by being the first to use it but the lack of trademark limits my rights. If I'm wrong, I'd like to know! I'll try and find a link to justify my point... lemme know where you found your info. Thanks! Lyte EDIT: Here's the complete quote from... http://www.uspto.gov/web/offices/tac/doc/basic/register.htm 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. I underlined the keypoint I was making in my previous post. Lyte
Define "Limit your rights?" - As I said, without a Federal Registration, you can't claim treble legal fees and you can't use the "R". I'm talking about the right to use the name. There is also a six year period before your mark is deemed "uncontestable" - so if you registered a mark that someone else was using before you, and they didn't come forward in that six year period, they couldn't stop you from using the name AFTER six years - although you couldn't stop them either. Most people don't want to risk thousands of dollars trying to register a trademark that they don't legally have rights to and hope no one notices in the next six years. I own several Federally Registered trademarks and have gone through the process from start to finish (including the dispute process) over the last 15 years. There isn't any link that can fully explain trademark law, but this would be a good place to start http://www.uspto.gov/main/trademarks.htm
Hey mjewel, I'm commenting only on the value of getting at trademark vs. going without. I'm not commenting on treble damages...etc...etc... You've sort of proven my point regarding the importance of getting trademark as it solidifies your rights to a mark, e.g. nationwide. If I'm the first with Billy Willy's Pizza in TX (w/out trademark) and you get Billy Willy's Pizza in CO ... how can I franchise nationwide and not have our two establishments confused with one another. Lyte
Below is an example of what I'm talking about. According to a radio spot I heard these two companies (Pet Butler) started seperately (10 years apart) ... with the same name... in two different states... but they've finally merged. Pet Waste Cleanup Leader Pet Butler Merges with Ohio Company that Launched the Industry "DALLAS, TEXAS - (March 13, 2006) - Pet Butler, the nation’s leading pet waste cleanup (poop scooping) service, and Pet Butler of Central Ohio, one of the first such service providers, have merged, the two companies announced today. Pet Butler of Central Ohio is now a franchise operation of Dallas-based Pet Butler Franchise Services Corp. The merger solidifies Pet Butler’s position as the nation’s largest company dedicated to the proper cleanup and disposal of pet waste, from residential yards, apartment communities, homeowners associations, and parks. By adding Pet Butler of Central Ohio, Pet Butler Franchise Services Corp. now has more than 25 franchises from coast-to-coast, and is on target for $2.5 million in revenue in 2006. Pet Butler proudly bills itself as “#1 in the ‘#2’ business.†The company charges a small per-visit fee for its technicians to collect dog and cat waste, carry it away, and dispose of it properly. Whether in yards or in public spaces, accumulated domestic animal waste can ruin lawns and present a significant source of water pollution. Despite their similar names, there had never been an official connection between the two companies. Their owners – Matt “Red†Boswell of Pet Butler and Pete Hulse of Pet Butler of Central Ohio – have been friends for years. Boswell founded Pet Butler in 1998, while Pet Butler of Central Ohio dates back to 1988. The two men began serious merger talks in early 2005." Cont... http://www.bison.com/press/pr3-13-06_pet_butler_franchise.html
You originally said, "The TM can be used by anyone and doesn't give any legal protection" I disputed that. Now you changed "doesn't give any legal protection" to "gives NO legal rights to a name". Those are two entirely different positions. So, yes you are correct with your 2nd statement that it does not give you legal rights to a name, however it does, as I said, provide legal protection. As for the last statement, it has to do with the fact you cannot keep a registered mark if you fail to use it in commerce. There mere fact of registration will not allow you to keep a name, if you fail to use it in commerce. Oh yea and I assume you are a lawyer to be so definative with your claims?