I registered widgets.net on Oct 5 2003. My product which is still in development will be called widgets.net (Microshaft Style). I went to register the name widgets as a trademark but found that some company in California has already registered that name however, they filed the trademark it on Oct 6 2003 - one day after I registered my domain. I dont know why I just didn't register the trademark right off the bat when I thought of it..(procrastination). Can the california company ask me to hand over my domain name? Does registering the domain name prior to his registration of the trademark make the slightest bit of difference? I can forsee one heck of a legal battle ... one that I'm afraid I might be on the losing end of.
Your advice is greatly appreciated,
Mike.
I am sure that this company probably did a proper search before they filed for Trademark, but since you only registered the domain the day before, it probably didn't pop up anywhere in their search. That's bad news for them, good news for you.
However, please check with a Trademark office or a Trademark Attorney to verify everything as I am not an attorney.
So if you just registered the domain name, your competitors could easily claim that the website could not possible have been trading onling long (at most a few hours) and therefore your trademark was not established in the minds of your consumers.
SN
important issue as well is your geo location, and the scope and class of the trademark.
ie if your in the UK and your website is, for example, an online word game called 'widgets' and the company with the trademark has a US trademark for widgets which are sweets, then let them waste their cash on pursuing you if they are unhappy with your use of the name.
The fact they regged the trademark within hours reeks of a trick that tried, and failed, to obtain a trademark post the registration of a domain to obtain it. Yes you may have to explain your 'usage' of the domain, but remember they will be trying to get the name from you and will have to prove that prior to you regging the name they had 'goodwill' in in their use of the term Widgets.net which underpins their trademark registration. After all, the system wouldnt work if I was a rich man and TM'd everything now. The best FREE info you can get is to trawl the cases on the UDRP website to see what has been deemed 'bad faith' usage of a domain and what has been laughed out of court, I'm no laywer ;-) but I think the latter is the result you would acheive.
PS start getting a warchest together now, I ended up settling prior to getting into HC for one simple reason,
I could not afford to demonstrate the £60k needed to finance the court to hear the case if I lost. MONEY = POWER, so get some stashed now.
Regards
Nu
Both the above-mentioned companies came after us threatening legal action if we did not turn over the domain. We did not need to, as we were using the domain in good faith, and while we don't have a federal trademark on it, we have common-law trademark rights. And we COULD get a federal trademark on it, since our line of business doesn't conflict with any of the existing federal trademarks. [caveat: these threats were made under the former NSI dispute policy, and the domain dispute rules have changed a bit.]
One more thing: As of Nov. 1, the US is now allowed to file through WIPO in Switzerland for trademarks across WIPO country members. So, if you wanted to, you could get a trademark in one or more other countries (if there is a category conflict in the U.S. between you and the other guy), and that would be additional protection. We just went through the process and it's not too tough...
