demand that I "release" domain. from a gmail account

[callivert]

Back in June, I found a fairly cool 6 letter nonsense word that wasn't registered, so I got the dot com. I should have checked trademark status, but nothing at all comes up in google so I didn't worry.
I bought it then forgot about it. I didn't even set up parking on it.

Well I got an email today from someone saying that they have a trademark pending on that word, and that they would like me to release the domain as soon as possible. Looked up the trademark on the government site, and it turns out they lodged the application for trademark 10 days before I bought the domain. D'oh!
Now I know this is not the place to seek legal advice, but surely it's the place to find out how to handle email enquiries of this sort.

first, the email is from a gmail account.
second, they somehow have the name of the registrar completely wrong.
Third, there is no phone number or other contact deat... my only way of returning contact is by emailing back to the gmail account.
Fourth, the name on the email doesn't appear anywhere on the 'trademark pending' information.

I want to play it right but on the other hand I don't want to be played for a sucker. I didn't do my research and so if I have to give up a 10 dollar domain I bought on a whim, so be it. And I certainly don't want to get served or get a bad name with my registrar. But I don't want to hand over a domain just because an anonymous person tells me to.

How should I respond?

[jdMorgan]

"I'd be happy to sell you the domain for $25.00 more than I paid for it (to cover my time and expense) if you will demonstrate that you are in fact the Trademark applicant. An e-mail from a free G-Mail account is insufficient.

"Send me a registered letter on letterhead from the address listed in the Trademark application. Include your work phone number at that address, and then we'll talk. Or have your attorney contact my attorney at xyzzy."

As applicable... :)

Jim

[bwnbwn]

Wait on the release as 90% of trademarks fail. Wait for it to be approved till you do a thing and tell them you will sell it to them for 100.00 for your time.

[Swanny007]

Yeah, waiting is a good idea. I tried to trademark a short domain but it was too close to an existing trademark and I didn't get it. Personally I'd wait for something more official too.

[callivert]

Thanks for the advice guys!
I think I'll wait it out. And on consideration, applying for a trademark, as bwnbwn noted, is not the same thing as having a trademark.

90% of trademarks fail

That's a surprising statistic.

[Webwork]

Not sure if you have this option but, on the rare occasion (once or twice in 10 years) that someone approached me in this way I suggested they call me at my law office. Never got the call. ;P

Point being, if you think there's either a scam OR a serious issue "in play" then having a friendly lawyer on a small retainer (someone you know and trust to "keep services small") is a good idea. A lawyer who has been around for a few years should have a good BS meter and effective methods for dealing with it.

[rocknbil]

I would DEFINITELY talk to a lawyer. I am not one, nor am I an expert on trademarks by any means, but I've applied for and secured one myself.

Somewhere in there is a lot of language around "first use in commerce" and proving first use. Example, in our application we uploaded a picture of the storefront with the trademark on the signs and the sidewalk sign as well as site captures to demonstrate first use in commerce.

So if they applied for this TM 10 days prior to your securing the domain, **IF** you had actually put it to work you could very easily have had "first use."

We secured our TM in 9 months, most take up to two years. I see a very lucrative offer coming your way while they wait it out. :-)

[SkoolBussDrvr]

just tossing my measly 2 cents in here:

before applying for a trademark/servicemark are different than tradename. i can't imagine anyone not securing associated domain names prior to spending the non-refundable (what is it now $325 per name per category).

if i understand it correctly (uspto.gov site), there can be several different company's using "greatnaame" all in different categories(forget what they call them) -- "greatnaame" widgets, "greatnaame" software, "greatnaame" hardware, "greatnaame" woodworks, ad nauseaum. For each category there is a separate fee associated with it. perusing through the uspto site last year i saw numerous tradenames similar to "greatnaamedotcom" which seemed kinda weird to me.

who should have "greatnaame"DOT com? Hmm.(registrant, i'd say)
who should have greatnaamesoftwareDOT com -- that's a different question.

now, if you plan to use "greatnaame" software, and they've registered for "greatnaame" as for software use, then there is a conflict. theoretically, "greatnaame" thingamabobs has no claim on "greatnaame" woodworks use on greatnaameDOTComNetOrg

if you like the name and don't want to give it up, i'd look up on the uspto.gov site just what category they've applied for using it on, if there is no conflict with what you got it for, then throw together a placeholder site up w/ your category.

while i'm dead seat against speculators buying up and parking names, i wouldn't even offer up a name i honestly registered to use myself without adequate compensation (including cost of registering new name for myself (including .com, .org, .net, .us variants) and changing any sites which i had on old name.

-- gee "domain name monetization" sounds nicer than "name squatting".

good luck

[Philosopher]

i can't imagine anyone not securing associated domain names prior to spending the non-refundable (what is it now $325 per name per category).

You know...I would think the same thing too, but you would be surprised. I can't count the number of threads I've seen here on WW because people did EXACTLY that.