Defending Against Trademarks Question

[accelerator]

Hi Guys

As you may know, I take a great interest in future technology, and am interested in registering generic future tech domains.

Let's say I think of a great fully generic term that could be used for a future tech. I register the domain but no trademark. Then, a few years later, someone registers a trademark (either UK or International), and attempt to claim my domain from me.

What mechanisms exist to protect myself against this scenario?

Is there a way that I can monitor the trademark databases and be alerted automatically to prevent a trademark going through related to my domain?

Thanks

 

[scottmccloud]

I don't know the legalities involved, but from a practical point of view, buying 'future tech' names is a complete gamble, I don't think it would be a good use of either time or money.

 

[accelerator]

Thanks for your thoughts Scott.

Does anyone know, once you have registered novel and non-intellectual-property infringing domains, what mechanisms exist to make sure that you can identify and then object to anyone subsequently attempting to trademark this term?

Thanks guys

 

[ian]

The way I see, if your registration of a domain pre-dates any trademark registration, they have no legal right to the domain. It wouldn't matter of the industry this relates to.

 

[accelerator]

Thanks for your comments.

How do I efficiently monitor/scan trademark databases for any attempted trademark applications related to my domain names?

Rgds

 

[ian]

Thanks for your comments.

How do I efficiently monitor/scan trademark databases for any attempted trademark applications related to my domain names?

Rgds

You would need to monitor the trademark journal and search engine:

https://www.gov.uk/check-trade-marks-journal

 

[accelerator]

You would need to monitor the trademark journal and search engine:

https://www.gov.uk/check-trade-marks-journal

Thanks, I had a look at this.

Is there anyway to automate the monitoring, a bit like Google Alerts, or will I just have to read it manually?

Thanks

 

[scottmccloud]

Once you've seen that a trademark application has been made, what would be your next course of action?

 

[ian]

Is there anyway to automate the monitoring, a bit like Google Alerts, or will I just have to read it manually?

That I do not know sorry, I've registered and own trademarks, but never monitored others.

 

[accelerator]

Once you've seen that a trademark application has been made, what would be your next course of action?

If I saw that a Trademark application had been made that was the same term as a domain that I owned, I could then object to it on the basis that I was already using that term.

Rgds

 

[jasman]

If I saw that a Trademark application had been made that was the same term as a domain that I owned, I could then object to it on the basis that I was already using that term.

Rgds

Only if it happens to be in the same classes as yours is used in. If it's not they can still use it anyway.

 

[Retired_Member38]

If you own a domain but aren't using it, surely you couldn't object to any classes at all ?

 

[accelerator]

If you own a domain but aren't using it, surely you couldn't object to any classes at all ?

My argument would be I've thought of a new and unique term, therefore I've registered the domain as I think the term is a valuable term for my exclusive future use, which could be development or sale.

Rgds

 

[ian]

My argument would be I've thought of a new and unique term, therefore I've registered the domain as I think the term is a valuable term for my exclusive future use, which could be development or sale.

Rgds

In that case, you should really copyright the name at that time, rather than trademark the service/product.

 

[accelerator]

In that case, you should really copyright the name at that time, rather than trademark the service/product.

Do you know where I do that and how much it would cost?

Thanks for your help.

 

[ian]

Do you know where I do that and how much it would cost?

Thanks for your help.

Never done a copyright, but IPO is the place for these too:

https://www.gov.uk/intellectual-property/copyright

Give them a call, they are very good to deal with.

 

[Edwin]

You can't copyright a domain name. See for example:
http://www.copyrightservice.co.uk/copyright/p18_copyright_names
http://www.newmediarights.org/business_models/artist/domain_name_subject_copyright_law

Also worth reading point 3. of this:
https://www.gov.uk/unacceptable-trade-marks

And this:
http://www.ipaustralia.gov.au/under...etween-trade-marks-business-and-domain-names/

 

[Skinner]

I looked into this a while ago when someone tried to reverse hijack a domain from me (I had an operational site so was protected from hijacking), you can only object to a TM if you have a similar mark. So you would need to apply for a trademark on each name you wish to protect.

Looking at about £200 a pop to do this, and even then, it could be argued that you are not actively using the mark. Which is what Apple did I believe with the iPhone mark against Linksys who had an iPhone years before.

 

[accelerator]

You can't copyright a domain name. See for example:
http://www.copyrightservice.co.uk/copyright/p18_copyright_names
http://www.newmediarights.org/business_models/artist/domain_name_subject_copyright_law

Also worth reading point 3. of this:
https://www.gov.uk/unacceptable-trade-marks

And this:
http://www.ipaustralia.gov.au/under...etween-trade-marks-business-and-domain-names/

Very useful, many thanks.

 

[sdsinc]

Let's say I think of a great fully generic term that could be used for a future tech. I register the domain but no trademark. Then, a few years later, someone registers a trademark (either UK or International), and attempt to claim my domain from me.

No, they just can't take it away from you, unless your name is infringing on their newly-established trademark. So you still have to be careful. If the domain is parked, you must be careful with the sponsored links for instance.

The problem is that you may now own a neutered domain name, if it can't be used for a completely different purpose than the TM.

What mechanisms exist to protect myself against this scenario?

The best defense is usage.
Sitting on a domain does not bestow any TM rights.
Try to put up a little more than a placeholder page.