namealot

With regards .com trade mark registrations for the term, after the domain name was registered, could not serve as prior trade mark rights to the domain name...?

chuckylefrek

Yeah the domains are cheap and not worth anything to me really. I just don't like the idea that someone can send me a letter demanding my domain names without even a polite letter first.

Though I would rather use them for another site totally unrelated to the other parties site than hand them over for free. I guess that may not be seen to be very professional though.

Is it worth a last ditch attempt to get some dollar out of the other party or would that put me in a difficult position? If I am happy to transfer them if they say no then nothing to lose I guess?

Thanks for all the advice everyone

namealot

Depends on you r situation really... If you were to respond go along the lines of thanking them for there letter state you were not aware of any other registrations of the name (nominet may hold sway with the .org.uk but not sure anyone else would?) If they did not state you about trade mark you can either not mention it at all or state when you registered the name you had checked to see if there were any trademarks and there were none decided it was a good name. Possibly mention you have invested time and monies in it are not sure what to do but will probably seek some advice and see how they play from there…?

My thoughts on replies are either be civil yet firm or don’t bother at all…? If you ask for money outright or are rude they will often use your replies in any evidence witch can paint you in a bad light so to speak... Also remember the way and manner that you reply can also be an indication to them of how long to prepare and how good a lawyer etc to allocate to your case this can have some distinct advantages for you if played well


this might also help http://www.chillingeffects.org/trademark/faq.cgi

GlasgowBob

Hi Paul, you say application - is the tm actually approved?

I had someone claiming rights over a .co.uk domain and under inspection their tm was still being looked at and I told them were to go (actually gave them the opportunity to get it for a donation to oxfam first)

... the tm was later rejected and have never heard from them since.

Robert

Ashton

To help people understand the situation, heres a similar situation (this is just an example!)

Lets say the domain was:
"freerefillrestaurant.co.uk"

Now imagine a restaurant was doing a campaign for free refills in its restaurant.

In my view the restaurant would have NO right to demand that url.


Please note: This domain is NOT his domain, its just a domain of a SIMILAR example.

chuckylefrek

Thanks - you are all really helpful.

In answer to the question, the trade mark was submitted in August this year so I assume it has not been approved yet. Though it has been submitted by a trade mark attorney so you would imagine they know their carrots from their onions.

Thanks Ashton for the great comparison

unusualdomain

August this year means that the trademark is unlikely to have even got to the publication stage. Once it has got to the publication stage then there is a two month period(at least) where people can object. Only after this is it granted. Oh that's for UK trademarks, not EU ones.

It sounds to me as if this company is trying to scare you into handing it over.

chuckylefrek

Thanks!

What surprises me is the name ("mark text") that they are trade marking seems to contravine the names that are allowed to be trade marked in the UK. I was under the impression you could not trade mark a name that describes the service.

According to the IPO site

We will not accept marks which:

* describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

So it is perfectly understandable how a name like "WH Smith" can be trade marked but this trade mark to me seems like the equivalent of a bread maker trying to trade mark "we make bread".

I assume that if they were able to succeed then no other bread making company could use the text "we make bread" on their website or other material.

I am no expert on trade marks so perhaps I am misunderstanding the rules.

Anyway it is great news to hear that it is possible to object to trade marks

woopwoop

The thing about trademarks is that you don't need to have one registered to protect it.

So details like application date (in this case) aren't important. The key things are:

1. Is the phrase/word in their name protectable (trademarkable)? Or are they to generic?
2. If they do have a claim on the word/phrase, in which classes? Just because 'three' occupy the mobile network area/class you could still launch a company called three in something unrelated.
3. The difference between registered and unregistered trademarks is slight. The main thing is that there is a documented date of first use. But as long as you use a name in business/trading and have dates (such as when you put an ad in the local paper, or the dates that you ran an ad with that name through adwords, or history of us of that name in the way back machine - archive.org) then you can demonstrate something called 'unregistered trademark protection'. This trumps a registered trademark with a later date. A registered/unregistered mark must also be used to keep/establish the protection.
4. You can use the TM symbol next to any unregistered trademark, but you can only use the 'r' in a circle next to registered trademarks.

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Ashton

The phrase is generic, is used by pubs around the country and they have no claim to it.

This is a joke imo, they are just trying to scare you. Write them a letter stating your price and that you will not be threatened by a TM Attorney.