Our domain is now a trademarked product

are we gunna be rich or go to jail?

[BaseVinyl]

Four years ago we registered a domain name, let's call it "greatwidgets.com", and at that time there was not really such a thing as "greatwidgets" as the technology hadn't advanced enough but now the technology is here and a company has trademarked the name "greatwidgets" and now greatwidgets are going to be a big market worth alot of money. Are we going to have trouble now that the name is trademarked or are we safe because we had already registered the domain name? Any thoughts?

[jdMorgan]

Have they registered it as a trademark, or are thry just claiming it as a trademark? That makes a difference. I suppose you could contest the trademark, but you should really contact an attorney who deals in such matters.

If you have and can show prior-use, you can't really "get in trouble". But they could still raise a stink and bully you into giving up your domain name.

If the domain is important to you, consult with an attorney. It's worth it.

Jim

[BaseVinyl]

Thanks JD. I checked the government records and their TM was applied about 18 months after we had registered the domain name...I guess now we are wondering if this domain name which is going to be worth much money...like let's say for example for ten years people have been eating tomato sauce and peperoni and muchrooms and cheese on a thin baked crust but suddenly people started calling it "pizza" and then would the person who had the forethought to register "pizza.com" be in a position to sell the domain name to one of the many huge global "pizza" makers? Darn...now I'm hungry!
:)
Thanks in advance

[BaseVinyl]

TC tells me: "If you use the domain with reference to their trademark it would still be grounds for dilution of their mark. In other words, if your domain tries to sell or profit from the widgets they have a mark for, it would be time for them to knock on your door"

So...does the Trademark they own in their country prevent us from Trademarking the same name in our country? If they own the Trademark on "greasypizzadrippings" in Country X can we register "greasypizzadrippings" in our foreign country and then sell our "greasypizzadrippings" on our "greasypizzadrippings.com" website or do we have to sell anything but greasypizzadrippings on our website of that name?

TIA
:)

[lukasz]

If you used the name before they trademarked it than you probably can dispute their trademark.
The other thing is that trademarks have classes - actually 54 of them.
If they registered trademark in one particular class than you can still register in the other class - assuming that you dont have the same product.
Eg. There is small pillow and quilt company in australia which legally registered trademark "microsoft" for range of their products.

[Webwork]

I'd be less worried if the domain described a class of technology - say WiFi.tld.

If it is one company's technology and they were simply late out of the gate registering the associated domain - bad dog!