Is there anyone on here that could take a quick look and see if this company in PA has a case or not.
The trademark is marked for "Old Widget Barn". The lawyer is stating that the names are too close and could cause confusion with the PA company's business.
How solid is their standing? Can they stop us from using the URL? The domain theoldwidgetbarn.com is available.
Thanks in advance for any help you can give me.
Spinner
[edited by: oilman at 4:29 pm (utc) on June 5, 2002]
For example: www.webmasterworlds.com
www.webmaster-world.com
www.webmaster-world.org
I would think that they don't really have a case, but they can quickly drain you of your money. You probably need some legal counsel. Before you go see the lawyer prepare exstensively for it. Trim that fee down by knowing what to ask.
(don't go here pop-up machine!!) amozon.com I would think amazon would have more of a case then your company.
[edited by: korkus2000 at 12:29 pm (utc) on June 5, 2002]
[edited by: oilman at 4:30 pm (utc) on June 5, 2002]
With the new cybersquatting laws, there is more teeth in them going after you. If they sue, they might be able to outlast you and still win even though you may be correct.
The trademark application was filed on 1999-07-30.
If you can show that you were using thewidgetbarn for your business prior to his filing, you can continue to do business under that name.
He keeps his trademark, and no else can come along and violate it, but he can never deny you the right to continue using your name.
The "created on" date on your domain registration should be all the proof you need.
Find the right section in the law by visiting www.uspto.gov. Quote chapter and verse and save the link.
Construct a link to your domain registration, pointing out (if it's true) that you were using the name before they filed.
Send a certified letter, return receipt, informing the nice attorney that he is incorrect.
(Don't tell him this, but the nice attorney would have to prove that you were not doing business with that name prior to their filing date, but the domain was simply "parked" by you, or was not owned by you at that time.)
All the advice above is good advice too.
[edited by: oilman at 4:32 pm (utc) on June 5, 2002]
I think lawyers use bluff and "chilling effect" to get away with stuff. Then if you hire your own lawyer to defend you, it's quite easy to get an incompetent one. If you get one that specializes in trademark law to avoid the incompetence factor, you could easily get overcharged. There's no substitute for doing your own research before even contacting a lawyer. You probably won't need a lawyer at all.
I was looking at the www.uspto.gov site, and didn't find what I wanted. I suspect that what I said above is based on case law, and that you won't find it at the PTO. I base my information on a PTO publication, Basic Facts about Registering a Trademark, U.S. Department of Commerce, Patent & Trademark Office, Revised, October 1995.
On the first page of this booklet, a distinction is made that is central to my point above. It says, "There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register."
My understanding is that your right to use thewidgetbarn.com would be based on the fact that it was being used in interstate commerce prior to the date on the "Old Widget Barn" trademark application. You also have the right to file your own trademark application. At that point, however, the PTO examiner could determine that it's too close to the existing trademark name, so it might be rejected (I'm not sure what would happen here, to be honest). Whatever the PTO did with your application, I feel confident that it would have no bearing on your right to continue using thewidgetbarn.com domain. If you get sued, The Old Widget Barn's trademark would not impress the judge at all, due to the dates involved. You are further protected because the name is not an exact match, but I don't think a judge would even get to the point of considering how close the match is.
I'm in a peculiar situation that illustrates this perfectly. I use a name, widgetname, for my database. I filed a copyright for the database in 1989, which neatly proves that I was using the name at that time. This exact name was already trademarked, I discovered after deciding on it, by some minicomputer application that was quite different and very obscure. It's also used in a couple of other contexts for very different products.
Then this trademark expired, and an Internet-based branding and naming company immediately filed an application and got the trademark while I wasn't looking. Their company name is "widgetname," so I can see how it was important to them. They also do trademark consulting, and mention this loudly on their website. That's amusing to me because even though they got the trademark, I outrank them everywhere in the search engines for "widgetname," except for some paid placement engines. And they can't touch me.
They grabbed the widgetname.com domain, whereupon I grabbed the widgetname.org domain because I wanted to protect my own branding. I can never get a trademark on this name because they got it (well, there is a slight possibility since our services are so different, but it wouldn't be very likely). But neither can they ever tell me to stop using the name, since I was using it before they existed and can easily prove it. They haven't even tried to contact me; they know it's a stalemate. Everyone's fairly happy, and no lawyers were required!
(Perhaps that should read, "Everyone's fairly happy because no lawyers were required.")
They don't want my url, we don't pretent to rep. the URL as the company name, so he got confused and said he would talk to his client.
Guess they did a search for widgets and found our holding good position, so they wated to scare me off the planet.
I'll keep this tread posted as to the final position they take.
Thanks again!
PS: next time, I'll do the widgets thing. :-)
[ivanhoffman.com...]
In the end, the spent a lot of money on attorneys, and I didn't hire one. But, I did know what I am doing.
Go the PTO site and print off his mark info, then print off your registration and fax it to them. They will then fear that you are going to get an injunction and shut their clients business down. I am sure that they will back down. If they don't and file a complaint, they could face Malicious Prosecution charges, where you could sue them for damages. That includes millions for pain and suffering. They don't have a case.
We have to insert a disclaimer here and emphasize that any opinions expressed are strictly that of the individual(s) posting, to be best of their personal knowledge and personal experience, and are not to be construed as or considered to be legal advice, which can't be and aren't given here.
It's strongly recommended that appropriate Government agencies be checked with for regulations, and if legal advice or services are needed that a licensed attorney be contacted.
Domain name issues are not quite the same as others.
The official documents for the US are at ICANN:
[icann.org...]
For the UK, it's Nominet:
[nic.uk...]
Sometimes companies may try to get an established domain name for themselves for link popularity and Page Rank purposes, as well as branding, but the above are the starting place for official information, and hiring an attorney with this specialty is the safest route.
