Would be very interested in reading Jberryhills thoughts on this one....
Or maybe read some recent posts that covers this exact topic.....
This is not a legal statement > As far as I have seen it is possible that the same name can be trademarked by different people (usually if it is made up of generic words rather than something that's more brandable like Google, Yahoo etc) ...as long as it is used for a different purpose.
Either way they would have to prove that you were using the domain in "bad faith" - ie: parking it with the companies ads on it would be one example.
If you owned the domain before they filed for the Trade Mark that would be pretty hard for them to do IMO - Does'nt mean they won't try it though.
I have some big numpty trying to muscle a domain off me at the moment just because they have it in another extension and I have the .com - as far as the records in uspto.gov show there is no Trade Mark on the name, although they have said that they hold the Trade Mark....hmmm, I'll see what happens !.
I think reverse hijacking attempts are going to get alot more popular unfortunately.
As popular as cybersquatting? I doubt it. You can't copyright a domain name...
This person happened to ask a very legitimate question that IMHO has not been asked here before in this context.
The reason I was interested in seeing JB's response is actually Ironic in a sense that this question is being asked at this time.
"I also want to clarify one thing as far as I have been able to find out so far thru 10's of thousands of $$$$$ so far is:.
If company A starts using a TM in lets say 1985 but never reg's it until 2007 and they successfully reg the TM without any opposition and can prove it's use in commerce as far back to 1985 and in 1998 or whatever year someone else reg's the domain/s containing this TM and offers the same type of services / products then yes the TM owner does have legitimate claims for the domains in question.
Even if the company that owns the domain since 1998 copyrights the CONTENT of the site. They are only entitled to the content copyright protection at the time of the copyright registration. A domain cannot be Copyrighted.
And the most interesting reason in wanting to see JB's response is that the original question contained KEYWORD.com not KEYWORDKEYWORD.com.
When one is able to obtain a TM for a Keyword as we all know there is many types, one being a dictionary keyword (This type of TM does not protect one as much as a fanciful / inherently distinctive trademark). So if the Keyword in question here is a fanciful TM this would IMO further legitimize a claim aganist domain in question...
Me too, Law is such a complicated area - I just checked the uspto.gov and it appears that an individual has also just got the Trade Mark for "Google" - Note the usage.
Word Mark GOOGLE.
Goods and Services IC 036. US 100 101 102. G & S: Real estate brokerage.
Standard Characters Claimed.
Mark Drawing Code (4) STANDARD CHARACTER MARK.
Serial Number 78944785 Filing Date August 4, 2006.
Current Filing Basis 1B.
Original Filing Basis 1B.
Published for Opposition March 20, 2007.
Owner (APPLICANT) Sunku, Suresh INDIVIDUAL UNITED STATES Flat 811, Varuna block Myhome Navadweepa, Madhapur Hyderabad INDIA 500081.
Type of Mark SERVICE MARK.
Register PRINCIPAL Live/Dead Indicator LIVE.
This is an (extreme) example of what I was trying to explain in my post above, although I must admit I did'nt think there would be any chance of doing that on a name like Google, Common dictionary names yeah, I have seen many examples of that happening.
I wonder if I am reading this correctly ? ...interesting.... the plot thickens !.
I do agree, it is a legitimate question. But the legitimate question has been asked repeatedly. Read the trademark bully thread, it is discussed there (though I admit it turned into a very sad thread.).
At this point, I will say "Read my sig" people can learn a lot.
Ok, I will answer this that has been answered many times before...
One of the UDRP's criterea is "Registered and used in bad faith", though it is starting to be translated into "Registered and/or being used in bad faith". If the domain was registered before the TM came into exsistance, then they cannot prove bad faith registration. But, if the domain holder decided to start offering content similar to the TM after TM status can be proven, that could be concidered bad faith usage. Now, the OP states, "What happens if I owned the "keyword".com before the trademark was filed?" He did not say before the TM comes into exsistance, but before it is filed. If the alleged TM holder can prove they are afforded TM protection by the usage of the name before they filed for TM registratioin, then it would not matter when the application was filed, first usage would come into play. So in this instance, the TM could have been in exsistance before the domain was registered.
As mentioined many times, you cannot copyright a domain name.
It is possible to have a TM on the same words, but they have to be in different catagories. The best example is "Apple". But keep in mind, it has to be a bona fide offereing of goods/ services before if can be accepted. Additionally, the TM is usually along the line of "Apple Records" & "Apple Computers" (Actually, it is Apple Corp vs. Apple, Inc).
But when reading the USPTO, a lvie indication does not mean it is a TM, only when there is a Reg Number is it a live registered mark. make sure you look at everything, esp TARR...
Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
It is not free and clear just yet. It is a lvie application, but has not been given a registered mark. Persoanlly, I don't think it will fly...
Thanks for the clarification, I doubt that one will fly either.
Are these personal opinions? Do you have a legal background? have you ever successfully argued a case? No disrespect but I had my P&TM lawyer read this thread and while you cite some cases, You also cite only a UDRP view... Most cases like these do start off with maybe a UDRP however a court usually always determines these kinds of cases. It is not up to the UDRP to determine any other mitigating circumstances other than that to do with a domain, The UDRP has zero juristiction once either side takes any court action especially when it comes to TM and Copyrights. As you can clearly see by the question IMO it's case law not a simple UDRP.
Also I am glad you again mentioned your sig. Again no disrespect intended but this forum was built around questions and answers, The content of this site is usually used by alot of newbs and seasoned veterans alike. I have read many threads here in the legal section and I must agree that your sig does offer some good advice, It comes across as arrogant, I could understand ones arrogance if they were actually a practicing attorney in the specialized field of Patent and Trademarks, But it gets a little tiresome reading these legal threads and repeatedly reading your response of "Read my Sig".
Ron built this community to help people in the business and newcomers and if us older members are going to treat every question with a generic response such as "Read my Sig" then whats the point in the legal section even being listed on the forum. Wouldnt it just be quicker and easier for Ron to just have a blanket response for anyone coming to this site looking for some legal TM answers from some of the best practicing lawyers in the business like Jberryhill and instead just have anyone with a trademark question read your sig.
Nobody is holding a gun to anyones head here and IMHO we should treat everyones questions with some decorum and respect. If one chooses to answer a question then so be it, If they get no responses then I would assume that they would start reading every TM question does not need an answer of "Read my Sig" Sometimes it's nice to see new members coming to the legal forum and asking questions, hopefully they stick around and learn...
"Give a man some fish and he can eat for a day. Teach a man to fish and he can eat for a lifetime.".
"Read my sig" may come off as arrogant (then again, did you read the thread I started in reference to why I do it now?), but I was tired of typing it in many many threads. Yes, this is a forum to help domainers, older and newer alike. But with anybody going into a business, learn the business, put in the time and effort to know what you can and cannot do. Spend several hours reading. Gain the knowledge. Many threads always goes down the same path.
As far as myself, I have always stated I am not lawyer, and the opinions I express comes from many many years of reading, researching and learning from others, (even from real lawyers who are actually in the IP field). I have read UDRPs decisions, I have come to see how they work. I read how the decisions came about. So are these my opinions? NO, they are someone else's who were in a position to render the decision that effected real cases and I try to relate to the thread at hand.
I have never argued a case formally, I have been contacted and received C&Ds which I have prevailed. (Though I thought I would have my first UDRP, but they gave up) I have help many others behind the scenes and they have greatly thanked me for my assistance. These people know I am not anyone important, but they trust what I have to say because of all the time and effort I put into this field. If no one wants to listen to me, that is fine. I jsut try to help.
Now is there is something specific you want to point out and correct? please feel free to do so, like anyone else, I could have some misunderstandings or clarifications. As I stated before, court and UDRPs are different creatures, but I would say almost all the cases now are UDRPs, so that is the angle I try to help.
PERSONAL OPINION: I believe it is easier for a alleged TM holder to prevail in a UDRP than in real court. I do beleive the domainer is instantly in a disadvantage because of teh bad rap we have. I beleie TM holders overreach and are let to overreach on thier TMs.
Now getting back to this thread, is the OP saying the domain was registered before the TM was registered or before the TM was acquired (they can be different). If you read my reply, I did give both sides depending on the circumstances. Additionally, usage plays an important part as a determing faactor of "Bad faith". Though intent of registration must be proven, usage of the domain can be a determining factor of teh intent of the registration. That isn't me talking, that is panelist from UDRPs...