Trademark - protecting "trademark".net

[Glover]

I own a company named "Example" and have registered the domain name example.NET. I have the trademark for the company name, but am thinking about getting a trademark for "example.COM" -- however another company owns the domain name example.com.

Do I have legal rights to sue the company who has the example.com domain name? Should I still apply for the trademark for example.COM or is this unnecessary since I was the first person to trademark "Example"?

Please help. I am looking to trademark as soon as possible (today 10/5/04) if necessary.

Thanks,

Glover

[edited by: tedster at 8:37 pm (utc) on Oct. 5, 2004]
[edit reason] remove specifics, use "example" [/edit]

[bhartzer]

Do you own the trademark on the word Example or on the word Example.NET?

If it's on the word Example, then theoretically you would have the right to all the domain names that contain that word.

[edited by: tedster at 8:38 pm (utc) on Oct. 5, 2004]

[Glover]

Yes, I own the trademark to the word "Example" itself. The company that owns the domain name Example.COM has applied for the trademark for the word itself, however I applied first on May 1 and they applied May 5.

The US Patent & Trademark office said that in 6 months I would hear from an examining attorney. That is why I was thinking about getting a trademark for Example.COM in order to get the .com domain from the other company. My company and theirs are in the same field.

Thanks for your reply.

[edited by: tedster at 8:43 pm (utc) on Oct. 5, 2004]

[tbear]

Did you register your trademark after the registration of Example.com?
If so you may (or may not) have problems in the race for registration.
I would recommend talking with a trademark lawyer....

[edited by: tedster at 8:40 pm (utc) on Oct. 5, 2004]

[Glover]

I registered the trademark for the word "Example" on May 1, 2004 - after the other company got the the domain name of Example.COM on March 15, 2004.

From what I have been reading on the internet the person who gets the trademark first has exclusive rights, even over the person who registers a domain name or is doing business before the official trademark was registered.

Do you feel my assumption correct? I will be speaking with an attorney tomorrow.

Thanks again.

[edited by: tedster at 8:41 pm (utc) on Oct. 5, 2004]

[Itagnc]

You need to discuss this with an attorney. It is not necessarily true that a single trademark entitles one to all domain names. The same name can be trademarked in multiple classes of goods and services.

[snsh]

Is the word 'Example' a made up nondictionary word? Did the other party register the domain name in bad faith?

[jim_w]

I didn't see what the example word was, but the test in a US court would be if a person purchasing services or products could be confused by the un-trademarked site? I know this from working with a Motorola Patent attorney. Somewhere, here I think, I posted a story he told be about the Motorola trademark in a court case.

Also, if they were using the domain first, the patent office may not even grant the trademark to you. And even if they do, that is no guarantee it will hold up in court with any given judge on any given day.

[tedster]

Is the word 'Example' a made up nondictionary word?

Yes, it is.

[davezan]

Speak to an attorney, especially one who deals with domain name disputes arising
from trademark infringements. They'll be in the best position to advise you about
this, especially when looking it at in a "reverse" position.

[photocartoonist]

In a similiar case, I was eventually advised by my trademark attorney to come up with another name.

[jk3210]

>>I registered the trademark for the word "Example" on May 1, 2004 - after the other company got the the domain name of Example.COM on March 15, 2004<<

Just a couple of random comments:

By "registered" do you mean the mark was approved by the USPTO for publication on the Primary or Supplemental Register, or do you mean you "applied" for a trademark on that date?

Keep in mind that registering a domain name doesn't mean much. The important thing is, when was the mark "first used in interstate commerce." If they haven't used it, then they have no rights as far as trademarks go.

However, if they registered the domain name BEFORE your trademark was APPROVED, then you won't have a basis for filing an action under the UDRP to acquire the domain.

Also, the ".com" portion of "example.com" isn't trademarkable. So sticking a ".com" on the end of a word that isn't otherwise trademarkable won't help you. (or them :) )

Trademark law is very complicated, to say the least.

[davezan]

Trademark law is very complicated, to say the least.

Remember, also, that the US is not the exclusive record keeper of trademarks.
Other countries have their own agencies working on this field and can invoke
WIPO if need be.

[Glover]

I applied for the "EXAMPLE" trademark with the USPTO on May 1, 2004 on their website. And a couple of days later on May 5 another company applied for "EXAMPLE" trademark with the USPTO. I researched my records and I first used the trademark on March 16, 2003 in INTERSTATE COMMERCE. The other company claims their first interstate commerce use was on March 15, 2004.

I am currently speaking with an attorney to help down the road when the trademark is finally approved. To see if they would only grant one company the mark or both because our line of businesses are very similiar in classes of services. Speaking with this attorney initially he did suggest that I may have to trademark and use a different name if I have no evidence that I used the name first before the other company's claim of March 15, 2004 in interstate commerce(i.e. rendered interstate commerce services). I do have proof that I did on March 16, 2003 after looking through my records.

Can you elaborate more about other countries having their own agencies working in this field and can invoke WIPO if need be and how would this effect the U.S. decision?

THANKS FOR ALL OF YOUR COMMENTS....THIS REALLY HELPS ME ABOUT THIS AND OTHER BUSINESS VENTURES I ENTER INTO IN THE FUTURE.

Glover

[Brad_Waller]

You cannot get the trademark for "example.com" because you have never used that term in commerce. If your trademark for "example" is indeed granted, then you will have a good case to stop the other company from using "example.com".

You can't just go for a trademark without any use fo that term. It would not make sense for you to start to advertise yourself as example.com when that would send business to another company.

Save your money for now, and hope that your mark is granted for "example". Then you can decide if you can afford to police and protect the mark. If the other company is large, they could easily outspend you. A full trademark battle costs in excess of six figures. Then again, some people respond quite well to a simple cease and desist letter from your attorney. It all depends on the other side.