Domain Disputes: Common Law Trademark

Monte:-“If you feel strongly against losing a domain name don’t let it go, make sure you fight for it. If it’s a panel decision it goes in the precedence library and is brought up in future case. And you’ll be branded. That why I talk about bad faith being an atmospheric thing. I you lost 10 cases in a row and try to demonstrate your legit right, there going to slap you. there are 2 million registered trademarks, domestic, foreign. Go to Google to search trademarks. Go to USPTO site and what has been filed and what’s been dead and alive.”

Jay:-“They have to spend 5 years in purgatory until they can apply to become principally registered trademarks, all of the abandoned and pending and rejected apps are in there as well, Just cause you get a hit, doesn’t mean there is a trademark. You might registered a domain name and think it is good for some kinds of goods and services, you hook up your PPC and along comes someone with a trademark claim and you look at it and they may have rights what some people will do is then they’ll just freeze up and get branded as a cyber squatter, trademark attorney are not emotionally invested in these, you can call them and say hey my bad I didn’t mean to harm anyone and we can end or transfer the domain name, as long as you promise to no bring further action, for most attorneys it is a good deal and you avoid falling into the pit of cyber squatters, even though you may have genuinely done nothing wrong, just a matter of sometimes you can make a case and sometimes it is a difficult argument.”

Monte:-“What if my creation date is prior to the trademark filing date?”

Jay:-“I’ve gone out and established what called a common law trademark by thinking of an idea and establish a brand, or the brands not developed, but I thought in advance, then a com, files the trademark but I actually registered the name first what is the best advice there? Is that a automatic win? You still can lose it. What matters is, people will often talk about the USPTO and trademarking a word, registration of a trademark is a recognition of rights that the trademark applicant has obtained. There are all these dates, each have different legal effects in a trademark proceeding. What you want to look at in the situation is how strong the rights were? What were there common law rights at the time you registered the domain name. You want to look at the first use in commerce date, figure out how strong were their rights? The trademark registration is not the issue. What were the common law rights at the time you registered? Were they in a different geographic area, were they in a different market, were they targeting different consumers will come into play. There was a case involving the domain name WFUBMC.com.”

Monte:-“Well what does that stand for?”

Jay:-“Well, the domain registrar said it was the ‘Web Forum For Unaffiliated Business Management Consultant and he claimed he ran a business consulting operation using this site. The problem was , that guy lived 5 miles down the road from the Wake Forest United Baptist Medical Center. With 2 letter or 3 letter domain names, there are a limited number out there. But with 6 or 7 letters it is a bit different. He claimed that he never heard of the largest employer in his area, the Salem area, it didn’t work well for him. Whether a trademark is registered may not be as important as factors like that.”

Monte:-“ Its great to understand those 3 factors. I wanted to turn that over to you to see if there was any importance in that. “