Trademark Thread on established site? Valid?

I have a well established site in an industry and got contacted by another site with a similar name saying we infringe on their trademark. They don't own any trademark or have anything registered but apparently can get a trademark via doing business in the industry for awhile. Our names aren't the same, but similar. However, they are much smaller and don't have nearly the presence I do. I didn't even know they existed, and when I registered the domain years ago I did check for trademarks.

They hired an online trademark attorney to contact us, and said we have to transfer the domain to them before legal action would be taken.

Is there anything they can do here with any validity? I could re-brand and change the domain (and do a 301 redirect), but here is no way I'm transferring the domain. But I don't suspect they have much say here, considering we have more presence than them and they don't own the trademark. Just wondering how online trademarks work in a situation like this. Any thoughts or info would be appreciated.

Thanks.

 

Just reply giving them 14 days to transfer their domain to you and suggest that they get a new trademark attorney. Based on the info you provided, they not competent and blowing hot air.

What is your URL and what is theirs? Lets look further into it.

(Disclaimer: I not a lawyer)

 

Trademark rights are granted even when no official application or registration has occurred in the USA. But you don't say where you are located.

There is no way of telling how "similar" something is without seeing it. Regardless, businesses send idle threats all the time hoping that the target of the request gets scared and gives in.

If a domain dispute proceeds, it will go to arbitration--which you consented to when you registered the domain name. The loser pays a $1,500 fee. If you want to do some reading about domain name disputes:

http://www.wipo.int/amc/en/domains/gtld/

Otherwise, I'd tell them to go **** themselves. Perhaps you could threaten to generate a lot of bad publicity for the site, something that will go viral and hurt their business. Nobody likes seeing the little person being bullied.

 

You are not giving out enough info for valid legal advice. At very least we would need to see your URL and their URL.

Trademarks are mostly misunderstood by people. C&D order is as meaningless as those notices Getty Images send out. You can entirely ignore them until they actually sue you. And Getty lost more than few lawsuits they initiated, plus they are about to lose billion dollar one to Carol Highsmith, and its almost certain that they will be paying her through their nose.

For this company to sue you and win, they need to have established business before you, ran in continuously, you have to be in exactly same niche, selling same kind of product/service, and they would need to prove in court that reasonable person would have been aware of them. While Google might win against someone running a search engine, Ad network, or something similar called Googie, Facebook already lost hundreds of trademark lawsuits against copycats, as did Fiverr.

 

I am no lawyer by any means but this sounds just absurd.

Unless you in Soviet Russia or N. Korea I wouldn't be too bothered. Well, maybe just give a call to their CEO. Im sure you can work something out, they got no leverage here.

 

As other people have said, we would need more information.

If you have a well established site and you're making money from it, you might want to consult with a Trademark attorney. You can probably find one that will offer a free initial consultation. I'm guessing their first suggestion will be for you to FILE A TRADEMARK for your site.