"A TM can be obtained through usage in commerce." posted by DNquest which from what I gather is you don't necessarily have to have a registered tm, but you can claim that tm through usage..
Now remember, I am not a lawyer, I can barely spell lawyer, this is just my opinion...
Hmmm I've always thought you had to have a TM to have rights to the domain name. I don't think simply having the company registered allows you the right to have the domain name..
You may have a case if you think you can answer yes to the following questions:.
- Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?.
- Did the domain name holder provide false information when applying for the registration of the domain name (or do so in connection with other domain names)?.
- Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?.
Make sure the domain name owner doesn't have a trademark to the domain name (which I doubt they would) as well.
This may not have helped a great deal, but decided I'd put it anyway.
Have a look at www.bitlaw.com/internet/domain.html and see if that sheds any light on the matter...
An ounce of prevention...
You can still file for a TM now, and show date first used in commerce as however far postdated it should be.
But still, you dropped the ball on multiple levels on this one.
Having a trademark isn't sufficient if the other party isn't infringing it. And the.
Fact you once had it isn't an enforceable claim to demand the other party to.
Hand it over.
If you marketed your product as WidgetSoftware, then you have a trademark..
Of course, the real challenge is demonstrating you have such to begin with.
Whoever has it and is selling for $2,800 priced it slightly above UDRP fees but.
Possibly below legal suit costs, not inclusive of attorney fees. While I certainly.
Understand the sentiment behind the principle, $2,800 might be a small price.
Compared to how much you've made from your business.
Whatever your decision, don't lose your head...
Please, I post suggestions, not advice. Nobody listens to me giving such...
There is a difference between a TM and a registered mark. A registered mark is much stronger than a TM and many people tend to lump the 2 together. If you are able to prove you have been operating under Widgetsoftware and you have been using the name in commerce, that would be your common law TM. It does not have to be filed or "registered". Just inform them on how long you have been using the name in commerce and the secondary meaning obtained. More than likely, the domain owner is a squatter and you have to go through what all the other companies need to go through to get their name...
Personally I think 2,800 is a fair price. I mean you're probably spend almost that if you go the route of filing a UDRP and you could still lose and end up with nothing. If it means that much to you, pay for it and move on with life...
I would offer them a $1k and tell them it's your highest offer otherwise you will seek alternative legal actions. See if you can get their legal dept on the phone and just tell them like it is. You had the domain...were using it in commerce. You have a registered corporation and have been conducting business for X years under that name. They can either sell it for $1k or you start legal process to obtain it. It's doubtful they make $1k on the name over the course of a few years and they just might decide to take your offer. The art of negotiation is key...