Hey Guys, I own a domain that I was in the process of getting a trademark and copyright. I just found out today that someone has a Trademark in the UK for the domain name without the .com, instead it is .co.uk What exactly does this mean? Any info is greatly appreaciated, dthbah2006
Have your lawyer look into the extent of their mark. It may only apply to just in the UK. Similarly your mark may only apply in US. If thats the case your fine, the two trademarks may not be in conflict with each other. But if they operate their business in such a way as to be marketing in the US they may be able to challenge your trademark application. I'm not sure about this though because they are not located in the US. But if anybody has been using that name before you try to trademark it then they have every right to oppose your mark, or at least be excluded from your trademark protection. Either way you need to be talking to a lawyer about this stuff. A public forum is not the place for definitive info. But can give you enough info to be able to ask better questions from your lawyer.
Thanks for the info axemedia. I had the .com domain registered since jan-2003. They registered the .co.uk domain in Jun-2006. They have photos of their product online with the NAME displayed with the TM mark as well. They applied for the UK trademark in late October. It still is in the examining stage on the UK patent office web site. Apparently the trademark has not been granted. Since this thread was started I contacted a legal consultant. He stated that I can still trademark the name here in the U.S. I do not know if I can trademark it internationally. dthbah2006
When they file is different that date of first use (check the filing to see when they are claiming they first started using the mark). In the US, the first to use the name, for that particular classification, establishes rights (you file on the name without the TLD). You can have established trademark rights without ever filing a Federal Registration. If the UK company doesn't operate business in the US, you can probably trademark the term (assuming no one else is using the name in a similar fashion). You should have a trademark search done before applying. It will run a few hundred dollars because they have to check for anyone using the term (just not filed trademarks) and it still isn't a guarantee. The trademark process takes about 6 years before it becomes uncontestable. You can file for a trademark and then 4 1/2 years down the road it can be challenged and if successful, you lose the mark.
Thanks for the info mjewel. They state in the application that they advertised the term 07-06-2006. I have had the domain name since 01-2003. I have had the web site up and running since 2003. I have also have the name used within PayPal, Ebay and several other companies since 2003. I don't know if that makes a difference. We are using the term for completley different things. Example: They are selling milk with the term as the name and I'm using the term for a business dealing with the internet. Does this make a difference? Thanks for the info mjewel. dthbah2006
Trademarks are granted by classification and according to your usage of the term - and there are over 40 classfications i.e. jewelry, advertising, perfume, etc. There are also grey areas where usage can overlap. In theory, you could have 40 different trademark holders for the same mark. For instance, there is more than one trademark owner for "myspace" - but each has their own different usage rights. If you own a trademark for a perfume, you most likely can't prevent someone from using it for the name of a computer. Some companies have broad protection and file in almost all classifications to prevent any usage of the term by anyone else - however, you cannot get a trademark on future intent of usage (you can't file on a name you want to use for something in the future). You also can trademark some generic terms like "apple pie" for a baked product. You could trademark "apple pie" as a perfume (assuming no one else is using it). Getting a trademark won't protect your name from being used by anyone else, but will prevent it from being used in a manner that competes with your usage. You could use Apple.com to sell perfume, but you couldn't use it to sell computers. You couldn't use "AppleComputers.com" to sell perfume because the name alone would be enough to cause confusion and infringe upon the computer makers trademark. A good intellectual property rights attorney can asset you in making a determination on your chances of getting a mark and what potential problems you may have with the particular term you are trying to get a trademark on. Of course I don't know the mark, but it doesn't sound like the UK mark will have anything to do with your registration. They won't be able to prevent your usage, nor prevent you - as long neither of you try to expand into each others usage.
Thanks again for the information mjewel. Very informative indeed. I am starting the process today. I will let you know on how things proceed. dthbah2006