Domains: Tradmarking Generic Term

[beemk]

I have a bunch of limo sites with domains like "Cityname+partybus" and some guy just emailed me claiming he has that trademarked and to give the domain up or he will C&D me. I'm not really worried because he emailed me and didn't have a lawyer do it but I'm curious how someone could possibly be getting a trademark on a common city+industry term combo like that when there's gotta be 20 companies in that city providing the same service.

Also after investigating him the guy used some pictures that I own the rights to on his youtube video, is there anything I can do about that?

[iamtam]

ask him to send you the proof of trademark by mail (because you aren't going to just randomly take down a site on his word) and then work from there. you may find that the trademark is very narrow, and doesn't apply to websites. It may only be a logo trademark, example.

[beemk]

I looked it up, it comes up as:

Mark Drawing Code (4) STANDARD CHARACTER MARK.

I honestly don't even care about the domain, it's only a shitty $8 domain but I'm more curious if I would be able to pull off the same thing hes doing in another city.

[backlinks.us]

You can check for trademarks in the us government database:

uspto(.)gov

For example "realtor" is a trademarked term just to give you an idea what kind of generics can get trademarked ;)

[iamtam]

Originally Posted by beemk

I looked it up, it comes up as:

Mark Drawing Code (4) STANDARD CHARACTER MARK.

I honestly don't even care about the domain, it's only a shitty $8 domain but I'm more curious if I would be able to pull off the same thing hes doing in another city.

does it show live? in theory, you cannot trademark something that is not "in use" or intended for use in a reasonable amount of time. a code 4 is basically just the words, without any claim to font, design, or color.

you may have to ask him to show it in use.

[beemk]

It shows live and he is currently using it for his company name and domain. He owns the .com and I own the .net. However people searching for the term on google are most likely searching for that general service in that area and not his company.

[raymor]

You could probably challenge his mark, if you can show that "partybus" is
used generically for similar services, by people other than him. You said that many other companies offer the same service. Do their web sites use the term partybus?

[Kenny B!]

He can send you letters, C&D's, etc but until he makes an official complaint with ICAAN and opens up a case which costs him $1600 (or it did a few years ago) then you don't have to do squat.

P.S. costs you nothing when he opens a case, unless you need a lawyer, but I've fought multiple domain disputes with no lawyer and won every one. Should it come down to it and you ever want to see our paperwork to get an idea of what we did let me know!

[beemk]

Originally Posted by Kenny B!

He can send you letters, C&D's, etc but until he makes an official complaint with ICAAN and opens up a case which costs him $1600 (or it did a few years ago) then you don't have to do squat.

P.S. costs you nothing when he opens a case, unless you need a lawyer, but I've fought multiple domain disputes with no lawyer and won every one. Should it come down to it and you ever want to see our paperwork to get an idea of what we did let me know!

Awesome thanks, thats exactly what I want. I could just as easily register a similar domain for $8 but its the principal of the matter. The way I look at it is he can either pay me to get the domain or he can pay legal fees to get the domain, either way I win.

[beemk]

Originally Posted by raymor

You could probably challenge his mark, if you can show that "partybus" is
used generically for similar services, by people other than him. You said that many other companies offer the same service. Do their web sites use the term partybus?

Yeah its an industry standard term everyone uses it.

[webgurl]

;) taking off!

[Matt 26z]

Who threatens a C&D?

This is like you hitting me and I say "If you hit me one more time I'm going to tell you to stop!"


The one thing I would be careful of is if you've got an actual limo company behind this website, they could file a lawsuit seeking all of your monetary gains from clients that found you through the website. They wouldn't necessarily get it, but you would still be put through the legal fees wringer.

You said that the term is generic in the industry. Is that because this company made the term popular? If so, your argument isn't as strong. Like how you cut your arm and say that you've got to put on a bandaid even though your bandage may not have been actually made by Band-Aid..... or you are going to drink koolaid that wasn't made by Kool-Aid.

[His Infernal Majesty]

Originally Posted by beemk

Awesome thanks, thats exactly what I want. I could just as easily register a similar domain for $8 but its the principal of the matter. The way I look at it is he can either pay me to get the domain or he can pay legal fees to get the domain, either way I win.

This

I was in almost this same situation before. I had someone send me a letter from his lawyer claiming copyright on a domain I purchased from an expired auction. It was just sitting there parked, it was a short .com so I bought it just to have it.

I contacted the person directly, and he was very rude about it, so I told him to go ahead and sue me; I wasn't doing anything with the domain to infringe on the name of his business. I never asked him for money, though, I was going to hold and see if he'd make me an offer but you shouldn't ask. We went back and forth a few times till he eventually backed down. A year goes by and he contacts me again with an ok offer and was nice about it this time. I just gave him the domain for free.

Good luck!

[Kenny B!]

Originally Posted by beemk

Awesome thanks, thats exactly what I want. I could just as easily register a similar domain for $8 but its the principal of the matter. The way I look at it is he can either pay me to get the domain or he can pay legal fees to get the domain, either way I win.

People like to play tough sending C&D's but when it comes down to shelling out $1600 to open a file at ICAAN they realize they don't want the domain that badly.

[beemk]

Originally Posted by Matt 26z

You said that the term is generic in the industry. Is that because this company made the term popular? If so, your argument isn't as strong. Like how you cut your arm and say that you've got to put on a bandaid even though your bandage may not have been actually made by Band-Aid..... or you are going to drink koolaid that wasn't made by Kool-Aid.

Actually he picked that for his company name because people were already searching it. This websites was one I set up for SEO purposes and planned on selling advertising on it in the future but for right now its just sitting there with a design but no phone #. I own the same type of domain name and actually run a limo company in another city and I know very well that I can't trademark my company name and go after my competitors for using it. It would be like me trademarking "blowjob pictures" for a website "blowjobpictures.com" and then trying to sue everyone using "blowjob pictures" in their domain.