Hello, I started programming a website which ended up being a 'create your online blog' website. Now I have a few users who are blogging (personal stuff, replying on news etc). The problem is that the name of my domain I registered, is trademarked in 2009. The trademark has a different description than mine. The trademark is stated to be 'intent-to-use' (there is no product made yet). My intention is not to make any money/profit out of my website. I made it purely for fun so people could share their stories. Could I get a trademark infringement issue? Thank you very much!
So the domain name you have for your website is trademarked by someone else? How are they using it? The trademark will indicate the use for which they registered. Often times their use and your use will not conflict. Also, when did they register their mark? If it was after you started your site, then they would have no right to make you cease using your name.
Thank you for your reply. Their trademark is not used (it is stated as 'intent to use'). They don't have a product/service yet, although their description it's says about online articles. I unfortunately registered the domainname after they have registered the trademark.
It is not clear to me if they have started to use the mark or not. You can't just register trademarks and not use them. That being said, it sounds like "online articles" is in the same general field as your "online blogs", so from that perspective I would have some concerns. How did you find the that someone had registered the mark? I assume you found it being used on the web somewhere which would indicate that they have, in fact, started to use the mark.
Thank you for your comment. That is indeed true. Their description said that it provides online articles in the field of food. I understand how that may cause some conflict. I found out that they registered the trademarked, when I wanted to look up my domainname in Google (see if it was ranked) and from there I found out that the name was put in a trademark (database) website where it says that it is 'intent to use'.
Correct me if I'm wrong, browntwn, but an ITU is just an application and not a formal trademark registration yet, isn't it? Of course, the applicant can still try to demonstrate common law rights, depending on usage/context. Essentially, a question here is who did what first.
An ITU is, as I understand it, the same as a regular application with the exception that you will show actual use sometime after filing the application. (what you do when you haven't actually used it in commerce already but want to file. Probably because the goods are already being made or use is imminent.) They application still moves though the process, and at some point, you need to file an SOU (statement of use). They give you "within 6 months of the issue date of the NOA" (notice of allowance). You can also file for an extension - another 6 months. I did not see this part in the rules when I just checked, but my recollection is that if you do not file in that time, you lose the right to register your mark. I would assume you could still have common law rights if you had actually used it in that time. With respect to the OP, it would seem to me that an ITU application from 2009 would have either been abandoned or been fully registered by this point in time. Perhaps it has been fully registered but just shows that it was originally filed as an ITU?
Thank you both for the comments. I checked the website uspto.gov again and I didn't saw the 2009 right, it was registered in early 2010 and its second extension of time to fill a SOU was granted. But I assume that if I create something different than a blog which has nothing to do with food/recipes and along those lines, and if I use the domain in a good faith, it is legal to use the domainname for the website?