OK - Here's A Question About Copyright - Business Thread

[marketsmart]

lets say i register a domain call hotsex.com in 2008.

i sit on this domain until this year when i am ready to do something with it.

meanwhile, in January 2010, someone buys sexhot.com and sets up an ecommerce site selling sex toys showing commercial intent.

in October 2010, I create my own sex toy line called hotsex and file for a trademark. my trademark is approved.

do i now have the right to send sexhot website owner a cease and desist with the argument that his name is confusingly similar to mine and better yet, do i have a case.

or do i just let him do his thing and not worry about it?






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[Agent 488]

i say yes.

[DBS.US]

You have the right to send sexhot website owner a cease and desist letter and they have the right to tell you to GFY.

[DateDoc]

You can send the cease and desist but 1st use is likely going to be in the other websites favor.

[marketsmart]

Originally Posted by DateDoc

You can send the cease and desist but 1st use is likely going to be in the other websites favor.

yes, this is what i thought and understand in regards to commercial intent as it applies to first use..

i am wondering though if it is possible to stop them from making products in the future using their name and just allow them to continue their business as a etailer...




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[FlexxAeon]

depends on if registering the .com counts as 'doing commercial business' with the trademark. i don't remember if url registration was accepted as such

otherwise whoever shows that they had intent to do business with the trademark first has rights to the mark

....but i'm no lawyer

[marketsmart]

Originally Posted by FlexxAeon

depends on if registering the .com counts as 'doing commercial business' with the trademark. i don't remember if url registration was accepted as such

otherwise whoever shows that they had intent to do business with the trademark first has rights to the mark

....but i'm no lawyer

no, thats not true..

if you dont register the mark, you can limit yourself in the future..

i have the registered mark..

the issue is they showed commercial intent first with their model, but failed to trademark their name..

and its obvious that that originally searched for the domain i own, but just reversed it after they saw the domain was unavailable...


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[FlexxAeon]

Originally Posted by marketsmart

no, thats not true..

if you dont register the mark, you can limit yourself in the future..

i have the registered mark..

the issue is they showed commercial intent first with their model, but failed to trademark their name..

and its obvious that that originally searched for the domain i own, but just reversed it after they saw the domain was unavailable...


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by not registering, you limit yourself but you're not fucked.

what the USPTO wants to see is who was doing business with the mark first. they say whoever was making a commercial product first that beared the mark first would be the "true" owner of the trademark.

but i don't know if starting an ecommerce site qualifies as a 'commercial product'. if it does then they'd be the owner.

but if you were manufacturing with the mark (not prototypes) before they registered the domain then its a slam dunk

[Barry-xlovecam]

in October 2010, I create my own sex toy line called hotsex and file for a trademark. my trademark is approved.

You trademarked "my own sex toy line called hotsex" not hotsex.com ...

What is the name of the sex toy line they are selling?

[marketsmart]

Originally Posted by FlexxAeon

by not registering, you limit yourself but you're not fucked.

what the USPTO wants to see is who was doing business with the mark first. they say whoever was making a commercial product first that beared the mark first would be the "true" owner of the trademark.

but i don't know if starting an ecommerce site qualifies as a 'commercial product'. if it does then they'd be the owner.

but if you were manufacturing with the mark (not prototypes) before they registered the domain then its a slam dunk

i did provide samples showing commercial intent when applying for the trademark, but the other company showed commercial intent by setting up an etail site before i started the tm process...

like you, i i also dont know if an etail site shows the same commercial intent as actually manufacturing a product..

i am hoping for some answers based on experience before i go waste thousands of dollars on an attorney who will just end up telling me the same thing..



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[Odin]

No.

For a start the domains aren't even confusingly similar. There is a big difference between hotsex and sexhot, and both use common English words - so it's highly unlikely it'd meet the grounds of confusingly similar.

Secondly, if they set up their store before yours, and prove it was up before yours (this is the key, you may get lucky and they don't even file a reply to your UDRP claims), but if they do, and prove they had their store up before you had established a trademark through either through use or by filing for one, then technically they'd have more hope in taking your domain.

Remember use alone forms a considerable part of trademark law. So from the minute they start using their website they technically have rights over that mark. Just because you officially register a mark later on, regardless of whether you had the domain before hand (considering it was not in use) they still have more rights then you.

I've fought off a few domain arbitrations myself and successfully won them all so far. But like I said, a good percentage of people never even respond with a response.

[marketsmart]

Originally Posted by Barry-xlovecam

You trademarked "my own sex toy line called hotsex" not hotsex.com ...

What is the name of the sex toy line they are selling?

they are selling lines from all manufacturers..

they do not have their own product..

my trademark is for hot sex (example of course, not the real name)

i own hotsex.com and have since 2008.

they bought sexhot.com in 2010



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[Odin]

Originally Posted by marketsmart

i did provide samples showing commercial intent when applying for the trademark, but the other company showed commercial intent by setting up an etail site before i started the tm process...

like you, i i also dont know if an etail site shows the same commercial intent as actually manufacturing a product..

i am hoping for some answers based on experience before i go waste thousands of dollars on an attorney who will just end up telling me the same thing..



.

You usually have to meet a few criteria. They are

Identical of confusingly similar: In your example that would be easy to fight off. hotsex and sexhot are not identical or confusingly similar.

Registered and used in bad faith: Considering you had not even used your domain and there is no way the other party is looking to benefit from your names existence, then it is easy to prove they have not registered the domain and are not using the domain in bad faith. A lot of people try these kind of tricky means (including big companies) to reverse hijack domains. If the owner fights it appropriately, you won't win in the example given.

Does he offer a bona fide service from the domain: Yes

If you are looking to reverse hijack some people, you can give it a shot all the same. You might get lucky and they owner of the domain doesn't respond. Otherwise they can easily defend their domain.

[marketsmart]

Originally Posted by Odin

No.

For a start the domains aren't even confusingly similar. There is a big difference between hotsex and sexhot, and both use common English words - so it's highly unlikely it'd meet the grounds of confusingly similar.

Secondly, if they set up their store before yours, and prove it was up before yours (this is the key, you may get lucky and they don't even file a reply to your UDRP claims), but if they do, and prove they had their store up before you had established a trademark through either through use or by filing for one, then technically they'd have more hope in taking your domain.

Remember use alone forms a considerable part of trademark law. So from the minute they start using their website they technically have rights over that mark. Just because you officially register a mark later on, regardless of whether you had the domain before hand (considering it was not in use) they still have more rights then you.

I've fought off a few domain arbitrations myself and successfully won them all so far. But like I said, a good percentage of people never even respond with a response.

thank you for the great response..

i have been formulating this product since 2008, but its taken 2 years up until development.

they came in and clearly bought their domain because i had taken the one that they wanted..

i was granted a trademark and i am manufacturing a product where they are not..

i have used the name in establishing a commercial intent since 2009, but i have had neither a site or a product prior to 2010.

i dont know if that makes a difference. in my mind i had a clear plan since 2008 to develop this product and then this other company just came in and created an ecommerce site that is reselling others products..



.

[marketsmart]

Originally Posted by Odin

You usually have to meet a few criteria. They are

Identical of confusingly similar: In your example that would be easy to fight off. hotsex and sexhot are not identical or confusingly similar.

Registered and used in bad faith: Considering you had not even used your domain and there is no way the other party is looking to benefit from your names existence, then it is easy to prove they have not registered the domain and are not using the domain in bad faith. A lot of people try these kind of tricky means (including big companies) to reverse hijack domains. If the owner fights it appropriately, you won't win in the example given.

Does he offer a bona fide service from the domain: Yes

If you are looking to reverse hijack some people, you can give it a shot all the same. You might get lucky and they owner of the domain doesn't respond. Otherwise they can easily defend their domain.

i dont want his domain, although i would take it if i could..

i just dont want him to start producing sex toys down the road while using his name.

do you know if it makes a difference if he is outside the US or operating his business not as a registered corp?




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[FlexxAeon]

Originally Posted by marketsmart

i did provide samples showing commercial intent when applying for the trademark, but the other company showed commercial intent by setting up an etail site before i started the tm process...

like you, i i also dont know if an etail site shows the same commercial intent as actually manufacturing a product..

i am hoping for some answers based on experience before i go waste thousands of dollars on an attorney who will just end up telling me the same thing..



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ok well lemme tell you from experience lol....

i recently got a trademark for a term i have been using - mainly in music - for well over 10 years now. but about a year ago me and my partners started seeing other people using the term within the same scope of business.

i've had the domain name for 'term'.com for about the same amount of time. i had lost it to a squatter for a few years inbetween but i got it back.

i hit up a couple of lawyer friends and asked them what i could do. they knew all about my domain name, but they didn't even ask me about it or mention it as part of the recourse. they were like "do you have some CD's or some product with 'term' on it?" i was like yeah and they basically told me i was good to go and should start filing for the trademark asap.

when i was registering i was thinking that 'surely since i have 'term'.com it should be a no brainer. again during the process i didn't see anything with regards to the domain name being a proper specimen to submit. they wanted photos of actual manufactured product.

but i would think that in this day and age, registering a domain name would mean something, and perhaps the trademark office just doesn't make it public knowledge for fear of being overwhelmed with requests for stupid trademark terms

[epitome]

The answer is no. Prior use is OK under trademark law.

It is the date you filed your trademark application that your mark is enforceable.

Granted, you can technically have a trademark without filing but it is much harder to prove in the court of law.

[epitome]

Adding something...

Nothing prevents you from scaring them with a letter asking them to cease using your mark.

The last trademark I filed for was for a real estate company where our logo looked like a for sale sign and had the colors red and blue in them.

RE/MAX lawyers caught it and sent us a letter saying that they noticed the filing and the similarities (them being colors) but that they were not going to challenge the filing.

They didn't challenge it and the trademark was registered and is live today.

Their what I am assuming in-house counsel was nice and said they wouldn't challenge it in the letter ... they probably just have to send them out to look productive ... but had they sent that letter without that info, I bet a lot of other people would have abandoned the filing.

[marketsmart]

Originally Posted by epitome

The answer is no. Prior use is OK under trademark law.

It is the date you filed your trademark application that your mark is enforceable.

Granted, you can technically have a trademark without filing but it is much harder to prove in the court of law.

yes, but does that apply to what they are currently doing at the time i filed..

example.. they are now a etailer..

i am a manufacturer..

i have a mark based on a manufacturing company..

if they try to manufacture going forward, can i stop them from using that mark as it relates to a product name they manufacture?





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[marketsmart]

Originally Posted by FlexxAeon

but i would think that in this day and age, registering a domain name would mean something, and perhaps the trademark office just doesn't make it public knowledge for fear of being overwhelmed with requests for stupid trademark terms

not only did i register the name, but i started using the name when discussing the business plan with prospective manufacturers...



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[FlexxAeon]

also you said:

Originally Posted by marketsmart

in October 2010, I create my own sex toy line called hotsex and file for a trademark. my trademark is approved.

did you FILE in october or get approved in october?

i believe when you file, there is a statement from trademark office as to whether filing was considered first use, but i cant remember if it was yay or nay (didn't apply to me)

[marketsmart]

Originally Posted by epitome

Adding something...

Nothing prevents you from scaring them with a letter asking them to cease using your mark.

The last trademark I filed for was for a real estate company where our logo looked like a for sale sign and had the colors red and blue in them.

RE/MAX lawyers caught it and sent us a letter saying that they noticed the filing and the similarities (them being colors) but that they were not going to challenge the filing.

They didn't challenge it and the trademark was registered and is live today.

Their what I am assuming in-house counsel was nice and said they wouldn't challenge it in the letter ... they probably just have to send them out to look productive ... but had they sent that letter without that info, I bet a lot of other people would have abandoned the filing.

that is great, but i also dont want to roll the dice and have this other company decide to fight and i potentially lose my mark after all the money i have invested developing this product...

i dont know if its better just to keep my mouth shut and wait an see if they develop a product or try to scare them into either them finding a new domain name or agreeing that they will not ever produce a product and just remain an etailer...




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[FlexxAeon]

Originally Posted by marketsmart

not only did i register the name, but i started using the name when discussing the business plan with prospective manufacturers...



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that wouldn't matter though. you have to be making money or attempting to make money with the mark to claim it.

[Hank_Heartland]

Originally Posted by marketsmart

thank you for the great response..

i have been formulating this product since 2008, but its taken 2 years up until development.

they came in and clearly bought their domain because i had taken the one that they wanted..

i was granted a trademark and i am manufacturing a product where they are not..

i have used the name in establishing a commercial intent since 2009, but i have had neither a site or a product prior to 2010.

i dont know if that makes a difference. in my mind i had a clear plan since 2008 to develop this product and then this other company just came in and created an ecommerce site that is reselling others products..



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Marketsmart, if you go into court with "your intent" vs there "actually doing business"...their lawyer will have you for lunch. Also, it does not matter that you are a mfg and they are a retailer, what matters is that they were doing real business 1st

[marketsmart]

Originally Posted by FlexxAeon

also you said:



did you FILE in october or get approved in october?

i believe when you file, there is a statement from trademark office as to whether filing was considered first use, but i cant remember if it was yay or nay (didn't apply to me)

i was approved for publication in oct..

the attorney i used said that there is now some other process that could take a few more months before getting final approval...




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[DateDoc]

Hank is right. 1st use applies to use in commerce. You could have pages and pages of legal documents describing what you want to do all signed, dated and notarized bur 1st use only pertains to commerce. So if you were not using it in commerce then you'd lose.

[marketsmart]

Originally Posted by Hank_Heartland

Marketsmart, if you go into court with "your intent" vs there "actually doing business"...their lawyer will have you for lunch. Also, it does not matter that you are a mfg and they are a retailer, what matters is that they were doing real business 1st

so does that mean that later on down the road they could take my mark away from me?

my understanding is that if they dont contest my mark during the filing process, they are shit out of luck..

they may still be able to operate, but they cant take my mark...




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[DateDoc]

Originally Posted by marketsmart

so does that mean that later on down the road they could take my mark away from me?

my understanding is that if they dont contest my mark during the filing process, they are shit out of luck..

they may still be able to operate, but they cant take my mark...




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My first question would be did they apply for a TM on sexhot or hotsex? If not and since they are an affiliate your worries can probably be lessened. Also, the process for them to take the mark from you is not going to be cheap for them especially if they are out of country. I'd let an attorney handle this and have you working on a superior product to anything they sell.

[Ron Bennett]

Originally Posted by marketsmart

...i have used the name in establishing a commercial intent since 2009, but i have had neither a site or a product prior to 2010.

So basically you did not use the name in commerce? Just because you were first to coin a name / register the domain, etc does not automatically give one TM rights...

Did you file an Intent to Use (ITU) TM application back in 2008-9? Or was it a regular TM app? An ITU TM app often allows for the filing date to count as the first date of constructive use assuming various steps are followed, such as reaffirming the ITU TM app every six months, etc.

Originally Posted by marketsmart

i dont know if that makes a difference. in my mind i had a clear plan since 2008 to develop this product and then this other company just came in and created an ecommerce site that is reselling others products..

Maybe they were scanning domain registrations, or somehow learned about your idea, or just got lucky / coincidence.

Usage in commerce is ultimately what counts - sounds as if they beat you to the punch ... and that's assuming their name is truly confusing similar to yours, which it may not be - sure it may seem so to you, but would it to the average person seeking out your product? Something to consider.

With all that said, you could send out a C&D letter and see how they respond ... perhaps, they'll stop using it and/or offer it to you at minimal cost ... but it's just as likely they'll dig in and ignore your demand, and perhaps instead fight back by filing their own TM in the U.S. ...

Again, the date of first use in commerce is what counts, not the filing date, except in the case of Intent of Use applications, in which the filing date may be considered as the date of first use in commerce / constructive use.

Ultimately it comes down to what's your budget and the importance of this matter to your business ... TM challenges can get very expensive ... in my view, especially if the other party has decent financial resources, is to seek to work out a settlement.

Ron

[PornMD]

You both have to predate their use and prove bad faith usage, at least to get the domain from them via UDRP. Even with your domain existing before their site, it's highly doubtful you could prove bad faith on their part if you weren't doing business on it.

Ultimately, your best option if it looks like they are small time is to anonymously approach them and make an offer on the domain. It would seem like a tall order to win anything in court/UDRP based on what you've indicated.

[Ron Bennett]

Originally Posted by PornMD

You both have to predate their use and prove bad faith usage, at least to get the domain from them via UDRP. Even with your domain existing before their site, it's highly doubtful you could prove bad faith on their part if you weren't doing business on it.

Yep. Based on the info provided, in my view, ICANN UDRP (applicable to gTLDs, such as .com, .net, .org, etc) is basically a non-starter, especially if the respondent chooses to fight back ... and all it may take is them documenting they have a bonafide TM too (even a common law TM may be sufficient, if well documented), since UDRP is not geared for handling complaints in which both parties have TMs.

The OP could roll the dice and hope the respondent doesn't respond to the UDRP complaint, but that will not result in a default decision, because the panel will still attempt to evaluate the case - there are have been instances in which the respondent prevailed despite filing no response.

Ron

[Far-L]

I am not an attorney but one thing I do know is that you are damned if you do, damned if you don't in this case.

Fighting anything to do with trademark and/or copyright is insanely expensive. There is plenty of good advice here, which is unusual for GFY especially on a complicated and technical matter like marks and copyrights. However, I strongly recommend paying a qualified specialist since you need way more detail to make an informed decision on this issue.

I personally don't think you have much of a challenge, but I agree that there is no harm seeing how resolved they are to keep their mark.

[Paul Markham]

Go talk to a lawyer.