Trademarks - Legal Issues
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- mg33
Some of you are pretty wise here, so I have a question for you.
A friend of mine is working on getting a business going, and registered/trademarked a long-defunct brand name. He owns all of it now.
He wants to buy the domain name that someone owns that matches the brand name. This person never did anything with it, but owned the url since 2001. We think that as soon as my friend started inquiring about buying the domain through GoDaddy's domain offer service, this other guy put up a really quick temp site with an email to buy t-shirts with the logo on them that we're not fully sure he's ever actually made.
My friend offered $500 for the domain, the guy came back and said $15,000...
He's working with his lawyer on what to do next, but our main question is this: This other guy can can refuse to sell the domain, but since my friend now owns the trademark, would it be illegal for the other guy to sell any self-made merchandise with the logo on it? So, in essence, owning the url would be useless to the guy in terms of selling product, correct?
I can't at this point talk about what it is that we're working on, but will be able to eventually and actually really look forward to sharing it with you guys.
- ArmandoEstrada0
i am far from a lawyer but my layman's interpretation would say that your friend cannot get the domain even though he wins the trademark.
lets say I registered the domain name dfjhgvdhkfjsg. Then you come along and trademark it etc. I would still own the rights to the name since i owned it before you're trademark.
Check out http://www.nissan.com/ and read the lawsuit link.
- albums0
there's something about owners rights and no responsibility to act on a request which parallels with there is no legal stance unless the name is being used for defamation.
in layman, if i owned tide, apple, or windows .com I don't have to sell for any price or reason and a judge won't act unless I'm using it to defame a brand, person, or corporation
twitter however will reassign a name if you own a trademark
- mg330
What's good is that my friend doesn't so much care about whether he gets the domain. He'd like to. However, we already have another one with the brand name and "USA" in the domain, and it should work just fine. His concern is more about this person not selling any product that includes the original trademark logo, which my friend now owns. Anything to do with the original brand and trademark, he now owns.
- bjladams0
i read a story on the guy that owns this domain a while back. made me chuckle- according to the article, he's not at all in it for the money, just realizes that he's got something of value and won't let it go.
http://ipad.com/
- dbloc0
if all you are worried about is him using a logo that you own the trademark to, send him an email and tell him to stop using it. If he doesn't stop using it, then sue. As far as getting the domain, good luck with that. That's going to be a tough sell.
- mg330
That's the essence of it pretty much dbloc. This guy has never done anything with the brand name since 2001, and I think that as soon as he could tell that someone wants it, he probably felt the need to try and look like he's doing something official with it. I've got a whole email string between them and reading between the lines it's pretty obvious that this guy thought/thinks he can look official (even with a crap GoDaddy landing page), but joke's on him in the end.
- dbloc0
cease and desist template.
- ribit0
Hang on, Is the domain owner actually using your logo (which your friend may have registered as a trademark, and he would also have copyright on), or are they just using the URL word/phrase (which your friend may have registered as a trademark)? The logo would be quite easy to pursue, but the word/phrase is usually harder to even get registered as a trademark. What was actually registered?
- albums0
name drop so i can search the uspto
- prophetone0
sorta reminded me of this one...
Microsoft vs. MikeRoweSoft
http://en.wikipedia.org/wiki/Mic…
- 20020
Depends on what was trademarked. Getting a trademark does not mean that you have a broad claim but rather predefined area of business that it operates in. It does not matter how long the business has been in business.
You can not make a claim to a domain if the domain does not cover the specific area of business that it filed for.
Your friend can make claim to a business based trademark but this opens a flood gate of anyone wanting a domain making up a business and trademarking it for sole purpose of domain claim.
It is possible to make claim but much like any other trademark dispute, it is a lengthy and expensive process.
From a very good lawyer:
"You can make claim to anyone, anywhere for anything. It doesn't matter what the law says. You can always make a precedence. It just depends on if that is worth it to you, financially."
- _niko0
is it Enron? Atari? Commodore?
- 20020
BTW, if your friend can establish a business, he can demand the domain through Anticybersquatting consumer protection act. It is designed for someone who gets the domain of an established business. It also works reversely.
http://en.wikipedia.org/wiki/Ant…
One good case to note is typographica
typographi.ca was claimed by someone in Canada stating that it was not rightfully registered in Canada by entity in Canada.
- doesnotexist0
why not avoid the headache altogether and find a different domain name to use? perhaps something clever or more memorable than myproductUSA.com
- albums0
br3ttba5hUSA.com bizitches
- mg330
ribit,
He has registered the brand name, containing the original logo which is defined in the trademark on USPTO site (sorry, I can't share the name at this time). This other person is not displaying the logo on his GoDaddy site (yet) in anything other than an old image from the original brand. He's got contact info for selling t-shirts, which we have to assume will contain the original brand. He also does not refer anywhere to "brand name" on the web page, but instead to "brandname.com."
My friend did not register the url as a brand name or anything, but the brand name. Looking at the uspto site, he's registered the mark, and it describes what he owns there. He is also already incorporated, so it's registered as "Brand Name, Inc."
- ribit0
So he has trademark registration for both the logo and also for the 'Brand Name' just as text?
In my previous business, we were told our logo (which was made up of the words 'car design news') could be registered in most countries, but that the trademark in the service name 'Car Design News' itself wouldn't be awarded in many countries, because it was too descriptive of the service/generic. A lot of this might hinge on the details of the name...
- This is two words combined into one, that was the previous brand name.mg33
- ********0
This is a sticky situation (no pun intended.) Your friend needs to try and talk him down on the price. Otherwise, he can hold on to the domain for as long as he wants. Your friend has no control. However he cannot use logos of registered trademarks on his site that belong to your buddy.