This bring up a curious point for me. Is there such a thing a TM squatting?? If I TM Billy Willy's Pizza and never use it... can I end in the dog house?? Lyte
What a lot of people do when they get these letters is make a new website url... and forward traffic from the domains in question to your new website (making sure the URL at the top changes) and never giving the company threatening you the domains.
Simply, no you cannot squat a â„¢. Basically, if you are not using name is not in use in commerce you would not be able to stop someone else from using it. There is no doghouse to end up in, you just will not be able to stop someone else from using the name. There is very little reason not to protect a name you are using with a â„¢ if you think the mark may have exclusive value. Here is a current image from the Victoriassecret.com homepage. On it, you can see that their main name is a registered mark, while the new brand name IPEXâ„¢ is a TM. However, if they stopped makintg that brand, and did not sell them anymore. They could not stop someone else from using the name IPEX. Also, there is nothing that would automatically preclude someone else from using the name IPEX in reference to something totally different, like a guitar school would probably be allowed to also use the name. http://www2.victoriassecret.com/images/collection/headers/osbrpbbvbra_hdr.jpg
This is how I had it set up.... A customer would type "3mstethoscopes.com" in their browser and they would be forwarded to http://www.mystethoscope.com/littmann-stethoscopes-c-21.html Their lawyers still contacted me, so... I guess using a domain redirect does not matter? I was NOT running a website off 3mstethoscopes.com or 3mstethoscope.com - they simply redirected the user to the 3m product line on our website.
You continue to post false information. A mark is no stronger with the "TM" than without. The "TM" means you are claiming rights to the name, but it you don't use the "TM", your rights are JUST AS STRONG - 100% the same as without using "TM". You do not need to use "TM" to have rights to a name - you only need to be the first to have used it, continue to use, in the particular manner you are establishing rights to. I could put the "TM" after my usage of google - does it give me legal rights to the name? No. If I opened up a mail order business on the net called "bluecatwidgets" and never used the "TM", I still "own" the rights to the name (for my particular usage) provided no one else used the name before me and it isn't infringing upon a prior usage. You don't need to claim rights to a name to have the rights. You can't apply for a Federal Registration UNLESS you are ALREADY using the mark in more than one state. If you are using a mark in more than one state, you have protection without the need for filing a registration. Anyone who has a website that offers services to more than one state meets the test for a Federal Registration - but without it, they have still established their rights to the name.
Read the above post. You can't even apply unless you are already using it in more than one state. Of course a Federal Registration has more rights, but because it means you are ALREADY using to transact business in more than one state. If you weren't, you can't apply. The usage is what is giving you more rights, not the filing. You can't apply based on "intended usage". You are confusing patent law with trademark law.
You are using their trademark to generate business to another url. That is the infringement. They can claim you generate income from their trademark and seek damages based on that. It would be hard to argue that you weren't doing this because if there was no benefit in using their trademark, you wouldn't be forwarding it to another url.
We will just have to agree to disagree. You are obviously quite experienced with Trademarks. I also believe you are mistaken or at least I have learned it differently. One question for you. If adding a TM to a mark gives no additional protection how come every major company from CocaCola to Victoria's Secret use them? As for spreading false information. I am advising people to use the TM and you are telling people it is worthless. There is only one of those that could harm the DP reader's legal position and that would be someone listenting to you and not using a TM when they should have. Since you see fit to claim in public that I am spreading false information can you please tell the reader if you are a trademark lawyer, a lawyer, or just an experienced lay person? I certainly am curious.
hey bbott, I found myself in a similar situation a while back. It turns out that trademark holders can have your domains forcefully transferred to them by filing a domain dispute with the registrar. It'll cost them a minimum of $1500 per domain to do this, but if they win you won't be entitled to any payment for the domains.... they will just take them. Of course there is the chance you could win the right to keep them, but I think you've already admitted to cybersquatting. When I was dealing with all this a while back, I looked at some stats and most complaints are upheld. Take a step back and think whether they have a good case against you... if they do, you may as well agree to transfer them for a fee. If it will cost them $1500 per domain they will most likely pay under that to save money rather than file a complaint.
I am not an attorney, but have spent hundreds of thousands of dollars in trademark related legal issues over the years. I hate paying legal fees more than most, and I make sure everything I pay for is explained in detail so I understand exactly what I am paying for and to understand how to limited problems down the road. As an owner of registered marks, I am constantly going after people who are infringing upon the mark in order to preserve my rights to the mark. This is almost always a losing situation as the people who are infringing are usually small-time operaters whom it is fruitless to try and collect even legal fees from. I just want them to stop using it without having to spend a lot of money that I am never going to recover. The main benefit of getting a Federal Registration is that is will prevent many people from using the name as a lot of people will check for a USPTO trademark but don't realize that they need to check for any prior usage. If you don't use the registered mark, you lose certain rights when it comes to collecting damages (but doesn't affect your usage rights), but the primary reason you want to use it that the average person will see it as a warning and hopefully prevent them from using it. Many people incorrectly think that if a name doesn't have a registered mark, they can use the name. Anyone can put "TM" on a name, but that doesn't mean anything from a legal perspective of rights having been established. Once you have gone through the process of a Federal Registration and been received uncontestable status, your rights to the mark have been "cast in stone". Your rights can no longer be questioned, even if someone came forward and proved they were using it before you. At this point, the only legal argument against your usage would be that it had been abandoned, or had become generic (like happened with Bayer and their Aspirin trademark). This is why you see big companies like Microsoft going after some little guy. They aren't worried about the loss of income, they are doing what is required by law and protecting their trademark from becoming generic. If they sat back and did nothing, then genericide becomes a possibility.
I don't think there is a set price, but I think the typical arbitration costs are $1,150 on average. Also remember that the trademark holder can also go after you for the damages, including this fee. The offer to pay a domain holder who is squatting on a domain is not required - and while some do it to simplify the process, most attorneys will advise not to pay anything at all to prevent inviting future problems of people registering an infringing name and then offering to sell it to the trademark holder. A small company would be more likely to pay a small fee to save legal costs.
You'll need to double check it but it was something like that. Basically it costs the party making the complaint x amount of money for the registrar to set up a "panel" of up to three people (the more people, the bigger the fee). If you get the option to sell, you may as well....since they'll probably just take your domains off you anyway. May as well get something for it. Check at http://www.wipo.int .... be sure to check that the trademark is registered in the country you're in. There are a whole load of links on the WIPO site that should be helpful. Hope this helps
With all due respect to mjewel's legal observations . . . Once again I will counsel people who think they have a valueable mark to TM it with a â„¢ by putting the TM next to their mark. I know mjewel thinks it is worthless, but me, tons of other lawyers, and Google obviously think otherwise . . . I doubt mjewel would tell anyone there is any harm in putting a TM on a mark you may wish to protect. In otherwords, it can only harm you to not use it, but no harm comes from placing a TM on a potentially valuable mark. Please correct me if I have misrepresented you mjewel.