Trademarks and domain names

[mkx]

This is a question I have been wondering for a long time now and never really got an answer to.

Company A registers www.domainname.com in 1996. At that time no business or trademark exists under that name. They park this domain name with a simple coming soon page with as they have plans for future devolopment.

Company B comes along and registers www.domainname.net, uses DomainName as a business name, no known trademarks are made on the name. Other trl's are also registered with the .ws, .biz, .org, .us extensions, etc, and are used in different ways with that name.

In 2004 Company A finally wants to devolop their domain. They incorporate under DomainName Inc. and trademark DomainName for protection.

Where do they stand? Can they sue or be sued?

[azguy]

Any company can sue or be sued Question is - will they win in whatever it is that they choose to do..

[triumph]

I was searching for this topic, because I am in the same situation now, I wanted to ask one of the big domain name guys here if they can answer this question.

Maybe KRL, can shed some light on it

[xclusive]

Very interesting question actually I would love to know the answer

[mynetporn]

Here is a bump for you as I also am in a situation close to this.

[coolfuck]

well there is no trade mark for thehun
hem/..
let me register thehun.us
just kidding

[Theo]

i can see the judge telling them stop wasting my time

[triumph]

bump for an important biz topic.

[SuckOnThis]

Normally it comes down to first use. Whoever was using (and can prove) they were using the name first in a business model usually has the rights. Although when one registers a trademark there is a 30 day period where someone can oppose the registration. So in this case I would think the company that registered the trademark would have the rights to use the name.

[Maureenoz]

Something similar happened to us. the .com was parked and we developed the .net. Not a good idea but in 1997 we weren't too slick and it was a good name. We applied for the trademark for SexyAds and sexyads.net and got them both and then found out that the owner of the .com had put in an opposition and the trademark for SexyAds was reclaimed and sent back to opposition.

We ended up in arbitration where we spent tons for the .com and they released their opposition to the trademark. It took us 4 years of legal wrangling to get through it all. Now we're good friends and we have the .com and the trademarks.

My understanding is, if you were using the name prior to their trademark, you can continue.

This is a lesson for all of us to check the trademarks and oppose them if they're going to hurt our business.

I know a good patent/trademark attorney in Florida if you need one.

[brand0n]

great thread

[triumph]

Originally Posted by Maureenoz

Something similar happened to us. the .com was parked and we developed the .net. Not a good idea but in 1997 we weren't too slick and it was a good name. We applied for the trademark for SexyAds and sexyads.net and got them both and then found out that the owner of the .com had put in an opposition and the trademark for SexyAds was reclaimed and sent back to opposition.

We ended up in arbitration where we spent tons for the .com and they released their opposition to the trademark. It took us 4 years of legal wrangling to get through it all. Now we're good friends and we have the .com and the trademarks.

My understanding is, if you were using the name prior to their trademark, you can continue.

This is a lesson for all of us to check the trademarks and oppose them if they're going to hurt our business.

I know a good patent/trademark attorney in Florida if you need one.

Thanks for the response, I remember back in the day when you guys had .net and I always wondered about the .com of it, but did notice recently that you had it, congrats, I know you guys deserve it, you have a nice site!

I am in California, and I have a meeting with a trademark attorney this week, if I need to talk to the one in florida, I will definitely let you know, thanks!!!!

[Maureenoz]

Thanks, I'll be interested to see how you go with your attorney. I always understood prior use gave you rights that they can't take away.

I should post here more but I'm about 2 decades too old I think.

[oberheimer]

I own a domainname.com that i might develop (a clothing shop) There is a company that owns the domainname.net (owned it before i regged mine) and they also have a trademark on name domain (note name domain not domain name, IN chinese). Can i start my shop on the .com
There trade mark is:

Goods and Services IC 025. US 022 039. G & S: Clothing, namely, swim trunks, bathing suits, swim wear, breeches, leotards, tights; imitation leather jackets, pants, and vests; leather jackets, pants and vests; coats, collars, overalls, masquerade costumes, underwear, briefs, thermal underwear, fur coats, fur jackets, hosiery, down-filled jackets, jerseys, jumpers, sweaters, uniforms, overcoats, pajamas, pants, parka, pullovers, shirts, skirts, smocks, spats, sports jerseys, suits, socks, t-shirts, topcoats, trousers, vests, waistcoats, aprons, bandanas, bib overalls, boas, caps, ear muffs, leg warmers, gaiters, gloves, hats, headbands, headwear, hoods, mittens, muffs, visors, wristbands, belts, garters, sock suspenders, stocking suspenders, suspenders, trouser straps; footwear, namely, beach shoes, esparto shoes, sandals, lace boots, slippers, boots for sports, sport shoes. FIRST USE: 19880300. FIRST USE IN COMMERCE: 20000401

Need helpm, They are producing waterpumps and filters (that's why i don't get all the goods in the trademark)

[Maureenoz]

Interesting question. When we started trademarking we did everything we thought we'd ever need with SexyAds. However, for each classification, we had to prove we'd already used it in commerce along with the date of first use. We had to prove we'd sold mugs, t-shirts, mousepads, etc. etc. and we had to send samples along with the application.

It would be worth a hundred dollars to talk to a good trademark attorney I think. Good luck!

[TheMob]

no way the .net company could get the .com

[oberheimer]

I like the domain, maybe i can ask and say that i might buy the name and wounder about if i legaly can sell clothes or??

[oberheimer]

I got it totaly wrong the company that owns the .net does'nt own the trademark

Its a different company and they own the japanese .com not the english translation (name domain in english)

[Maureenoz]

Then if I were you, and I wanted to grow a business around that name, I'd trademark it. Without opposition it's not hugely expensive, but it will protect you.

[oberheimer]

Not sure how much it costs, but i might design some t-shirts aswell, maybe sweaters not sure yet. So it might be a good idea, the only thing is that i live in sweden.

[SpamUp Guy]

Originally Posted by raulph

This is a question I have been wondering for a long time now and never really got an answer to.

Company A registers www.domainname.com in 1996. At that time no business or trademark exists under that name. They park this domain name with a simple coming soon page with as they have plans for future devolopment.

Company B comes along and registers www.domainname.net, uses DomainName as a business name, no known trademarks are made on the name. Other trl's are also registered with the .ws, .biz, .org, .us extensions, etc, and are used in different ways with that name.

In 2004 Company A finally wants to devolop their domain. They incorporate under DomainName Inc. and trademark DomainName for protection.

Where do they stand? Can they sue or be sued?

Well, according to my experience in Domain Names -- If you develop that domain then NO, you shall not be in trouble if you actually prove that you registered the domain for actually using it!!!

Good Luck!