Registered Trademark vs. Domain Registration
Monte: Right, right. A couple questions are popping up on the chat room, one of which asks if a domain name’s registered before the trademark, if the domain name’s registered before approval of the application date, what’s more important?
Howard: Well, it’s more important to have it before the approval, because the approval is the registration, the application is simply saying that I want to register it and we believe that we have a right to register it, but it’s up to the trademark office to determine whether or not you have that right, so--
Monte: So does the application date have any weight whatsoever in terms of if you were let’s say in a dispute in a trademark case regarding a domain name and the application date was filed but the approval hasn’t happened yet?
Howard: Again, it all boils down to use. If in fact, and that’s the important thing, if in fact the application pre-dates the registration of the dot-com, yet the dot-com is not used in the same way that their trademark is used, then it really doesn’t matter what the date is. On the other hand, if there is a similar use and because it can be shown by the complainant that the dot-com was registered knowing that the trademark was being registered, that does not bode well for the respondent.
Monte: Great, great. Well, that’s some great info, Howard. Anything else you’d like to mention or talk about real quick?
Howard: Well, the only other thing I say to both complainants who believe that their trademark is being sullied [ph] and to domainers who register trademarks knowing that they might have a problem, is that if in fact you’re using it for a legitimate business purpose, which is not confusing with the trademark, the respondent is home free and the complainant might as well forget about it, because it’s not gonna happen. On the other hand, you know, it all boils down to common sense, is really what it boils down to.
Monte: Right, use your--
Howard: Common--
Monte: --head, use common sense and if you get--
Howard: Exactly.
Monte: --in trouble, probably the best idea is to use an attorney.
Howard: You got that exactly right.
Monte: Right. So all of you listening, Howard’s been doing this for a long, long time. You know we’ve had John Berryhill on and we’ve had Steven Lieberman on, and Howard can be found at neulaw.com, that’s neulaw.com
Howard: E-mail is Howard@neulaw.com, I welcome all--
Monte: Howard@neulaw.com, right.
Howard: Right.
Monte: And he has a lot of great information on his site and a lot of credentials, and a great resource, and I’ve been working with him and his clients for a long time, and he’s just a great guy, he’ll help you out with anything that you need.
Howard: Thank you, Monte, I’m looking forward to working with you at Traffic 2005.
Monte: Yeah, definitely. And sounds like we’re gonna put together a little panel and talk about some domain-related issues there and looking forward to it, and we’re looking forward to being a sponsor, as well.
Howard: And even more exciting, I think, is putting together Domain Auction, that--
Monte: Yup, we’re gonna really sell some kick ass domains this year.
Howard: I think so.
Monte: That’s for sure. All right, Howard, I’ll let you go, it sounds like you’re having some dive-bombers behind you.
Howard: I’m at the airport Hilton. I’m at a lawyers conference right now, so--
Monte: Oh, I know I took you out of something that was a lot more exciting than that.
Howard: No, I guarantee I’d much rather be with you.
Monte: Oh great, great. Well, I really appreciate all your time and that’s gonna be the conclusion of our show. Thanks again for both of our guests, thank you to our advertisers and to the folks at WebMasterRadio for putting on a great show, and we’ll see you next Wednesday, we’ll have some exciting guests, as well, I’ll post it up on the boards, and I’ll hang out in the chat room to answer any questions you guys may have. Take care, have a great week.
| Previous Page | Back to Index |