New Domain Name & Trademark

Some company has claimed a non-existent trademark on my domain name

[irock]

Hi, I recently registered a domain name that someone has dropped 2 years ago. And out of curiosity, I googled the domain name and found out a company has claimed trademark on the domain (along with a list of other names for non-existent products). However, after checking with Trademark Electronic Search System (TESS), nothing came up. What do you think I should do now? Am I not searching trademark in the right place?

FYI, I intend to publish a blog on that website.

[kaled]

What do you mean by "claimed a trademark"? (And what country are you in? I'm guessing USA.)

You can register a trademark - that's one thing.

You can in some cases acquire a trademark by virtue of use over a period of time. For instance, a shop might not register a logo or name when operating as a single store or even as two or three, but if someone comes along and tries to use a similar name or logo, the shop may take legal action - of course they might not win.

As rule of thumb, if you see the (R) symbol - that means the trademark has been registered, but if you see the (TM) symbol it has not, but there are bound to be many instances otherwise (because people who should know better, don't). Also, when writing about someone else's good or services, a registered trademark may be accompanied by (TM) rather than (R) since the (TM) symbol is merely acknowledging the use of someone else's mark within the article.

Kaled.

[irock]

Ah okay... thanks for the clarification. FYI, I didn't find that name even used by that company... not even ONCE. As I said, they listed a bunch of names they didn't ever use but they claimed to have registered trademark. After a search on TESS (US trademark search system), only 2 came up.

I mean... if they did use the names on their products, I understand and will stay away from using one of those names for my blog. However, this doesn't seem to be the case. What do you think I should do?

And FYI, that company with the 'trademark' is from USA. I'm from Hong Kong.

Thanks again for your help!

[IanTurner]

Your first port of call should always be the Trademark Registrations for you own country of residence.

If no one has registered the trademark in your own jurisdiction you are free to use that name.

However there are other considerations if you are going to use a domain name that is in one of the global tlds (com, net, org etc) as you could be subject to a WIPO UDRP claim.

[kaled]

Provided you are not acting deceptively or profiting from someone else's intellectual property (i.e. the trademark) you may be ok.

The internet has blurred many international boundaries and the law is a long way from catching up. If your blog is targetting an audience outside the USA, and your domain name registrar is also outside the USA then I would only expect a problem to arise if the trademark belongs to a multinational (with deep pockets).

You should be aware however, that a trademark that isn't in use still has value. For instance, Sony has stopped making the Walkman but a few years from now, they may have a new product that they'll want to label as a Walkman so they will continue to renew the trademark and defend it in court if necessary.

Kaled.

[HuskyPup]

If no one has registered the trademark in your own jurisdiction you are free to use that name.

Are you sure Ian?

I would have thought a global trademark is a global trademark and if one searches that phrase there are loads of results.

More in-depth research is required IMHO.

[kaled]

I would have thought a global trademark is a global trademark

Similarly, a time machine is a time machine...

Or, to put it another way, there's no such thing as a global trademark any more than a global patent. Most major nations belong to groups that recognise such things so you may only need half a dozen registrations to cover most of the globe, but there is no trademark office you can apply to for a "global" trademark.

Kaled.

[HuskyPup]

there's no such thing as a global trademark any more than a global patent

Hmmm...I'll let you take up that discussion with IBM, Sony, Rolls Royce, Coca Cola, Scotch Whisky, Intel...do I need to go on?

[kaled]

Each and every one of those trademarks (except Scotch Whisky) will have multiple registrations around the globe. I'm not sure about Scotch Whiskey - it certainly doesn't belong to a company but maybe is protected by one of those funny regional thingies.

It's also worth noting that trademarks can be limited in scope and/or be shared. For instance, Apple computers were able to use the name because they were not operating in the music business.

Amazingly, Volkswagen bought the Rolls Royce car company, but their lawyers stuffed up and they didn't buy the name so VW now sell cars under the Bentley name instead. The "Rolls Royce" name was bought by BMW and is shared by the aero-engine company.

Kaled.

[HuskyPup]

'm not sure about Scotch Whiskey

There's one heck of a read here if one has the time:

[scotch-whisky.org.uk...]

I specifically mentioned Rolls Royce because of the VW and BMW issue and it was only in 2007 that Apple Inc and Apple Corp settled their decades of differences and that primarily was so Apple could sell The Beatles tracks etc, obviously The Beatles fancied the money as well.

will have multiple registrations around the globe.

It would appear there are 83 signatory countries signed-up to WIPO:

[wipo.int...]

Since April 1996, companies in the UK have been able to register their trade marks on a wider international scale through a scheme known as the Madrid Protocol. This is a treaty administered by the World Intellectual Property Organisation (WIPO), an arm of the United Nations based in Geneva.

Under the Protocol, when an applicant has registered (or filed an application to register) a mark in their own country, he or she can apply for an International Trade Mark to be registered with WIPO for all or some of the countries who have signed up to the Protocol.

An International Registration is not in itself a multinational mark, but a mechanism for obtaining a bundle of national rights.

Once WIPO is satisfied with your application, it will enter the mark on the International Register and notify the countries specified in your application. WIPO will also advertise the mark in the International Gazette. Each country then has up to 18 months to object.

If one or more countries object and you either do not argue your case or you lose the argument, your mark will not be accepted in those countries. However, it may be acceptable in other countries and will be recorded accordingly on the International Register.

Oh boy...I think I'll stick to site construction:-)

[kaled]

I must admit I had completely forgotten that WIPO deals in trademarks. I mostly think of it as dealing with copyright - probably because that's how it affects me!

Never let it be said that I'm too stubborn to admit I was wrong. In the literal sense, there are no global trademarks, however, I'm an engineer by nature and we deal in approximations not absolutes so I think WIPO probably gets close enough for me.

Kaled.