Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[antiques67]

nevermind

could someone legally buy the domain vintagecocacola.com

and sell antique coca cola related products off of it?

[Kaitlin]

If you anticipate litigation, don't reveal your name or any real facts that could link your post to your identity.
It's not only in criminal law that "what you say can be used against you."
Not only do "admissions against interest" come in despite the hearsay rules, but anything shared publicly cannot be the subject of attorney-client privilege, if you later hire one. 
Please go back in and edit out anything that your opponent could use to find you.

When you post to the internet, you post to the world. 

[Zonath]

First of all, you may wish to redact out the marks at-issue as well as your user name, considering that this is an open forum which anyone can view, including attorneys for the company which may or may not be suing you.

Secondly, this isn't a copyright issue.  Copyright typically doesn't extend to aspects of items which are purely functional, and in any case, your subsequent sale of any used copyrighted article would almost certainly be covered by the First Sale Doctrine.

This leaves you with the trademark and domain name questions.  In regards to the trademark issue, your registration and use of the domain name may or may not be covered by the principle of "Nominative Fair Use".  I would suggest that you read up a bit on nominative fair use in order to determine whether or not it would apply to your case.  In general, I do believe the use of trademarks within a web page which advertises used products does in fact constitute a nominative fair use to the extent that care is taken to avoid any intimation of sponsorship by the trademark-holder and to the extent that the person claiming fair use is careful to use only what is necessary to identify the products (such as by omitting any distinctive fonts or logos used in the original mark, for example).  At the same time, I'm not entirely sure how this relates to actual domain names, and I suspect that the legal issues surrounding such a new technology might not have been completely developed by the courts yet.

Might there be actual trademark infringement?  Well, assuming your fair use defense failed, I don't think the courts would have too much trouble finding infringement, given that you're using the trademark to market the same products as the trademark-holder.

The owner of the mark may also attempt to use UDRP (a process involving disputes over domain names) in order to attempt to force the transfer of the domain name, so you should generally research what goes into that process, as well.

Finally, you should follow up any reading and research you do with a visit to a trademark attorney, since you're already being sent threatening letters, whether or not those letters involve any actual claim or process being initiated, and an actual visit with an attorney may bring up additional issues or defenses which we could only really skim in this forum.

[antiques67]

o.k. i've read up on the terms suggested. thank you they were very helpful and i understand the legalities of this forum a little better than my initial post (which i mostly removed because i said to much). Here's the situation:

A company wants me to cease use of my domain. I sell vintage 1936-1969 merchandise. The company that originally made the goods is still in business and still making goods under the same name (which they have a trademark for the name).

I am not selling any of their current goods. I am not using their visual logo and am not trying to confuse users. The name of my domain contains their trademark name (but in it's now common language term, i can't think of something similar - maybe xerox, if you were selling old xerox machines on a website called "oldxerox.com" could xerox make a claim on you?), that's kind of similar....

Another annoying demand they are making is that I include the R symbol after every instance of their trademarked name (it's my understanding that you only have to include that after the first instance of the name on the page?). They also state that I can only use their trademark name as an adjective and never as a noun?

Does any of this sound enforceable? There are more demands, but these seem like the biggest, first of course being their demand that I cease use of my domain.

Thank you.

[queesq]

It seems you are claiming that the trademark at issue is no longer a mark because it has become a generic term.  Your example of "Xerox" is not a good one because -- just like Kleenex -- it is a valid registered trademark that its owner monitors (and sometimes employs reminders to the public that it is remains a valid trademark). 

If you believe that the mark at issue has indeed become generic, you can use that as a defense to your use of the "mark" in your domain name.  Also, if the mark is generic, you may use that as grounds to cancel the trademark registration at the US Trademark Office.

[artchain]

I believe after your original post, someone pointed out that you may be able to legally use the trademark in a nominative sense.

However, if you are at the point of getting threatening letters, you need more help then you are going to get in an online forum.  You should schedule a consultation with an IP attorney. 

Remember that sometimes companies will sue you even if you are legally in the right, and it can be very costly to defend against such suits.  At some point, you'll also need to decide what your personal risk threshold is.

[NJ Patent1]

TM makes-up only ca. 20% of my practice and that is almost 100% prosecution / procurement, so I may not be up-to-speed on the latest “cybersquatting” and related jurisprudence.  But, I hope the following general comments helps your understanding of the underlying issues. 

The policy behind patent and copyright law is protection of the inventor / author owner.  The policy behind TM protection is slightly different in that protection of the consumer (or the “market”) from confusion as to the source of goods or services is also considered.  This “likelihood of confusion” analysis figures big in a lot of TM litigation and IMO is important to you scenario. 

You picked a good hypothetical.  CocaCola(R) and Coke(R) are powerful (or “strong”) marks.  A lot of work went into developing and protecting the “brand”, world-wide.  The pale green, curvy, ribbed glass bottle has essentially disappeared as packaging for the product.  But I still see it occasionally in retro ads.  “Retro” goes in and out of fashion.  A consumer seeing “vintagecocacola” on a website could easily and IMO probably would associate it with the Atlanta-based company, especially if the related goods were beverages.  IMO the “likelihood of confusion” would be high. 

Could someone other than the CocaCola company register the domain name “vintagecocacola.com?”.  Probably.  But even if they did, using it in commerce would be a different story.  And if I recall correctly, there are be provisions in law (I think Zonath mentioned this) through which the owner of such a powerful mark can get the domain name reassigned to them. 

There is a reason why the owner of a TM would tenaciously police and defend the mark, making the demands they are making, especially the owner of a “strong” mark.  A mark can become a “generic” descriptor of a “good” in the eyes of a consumer, no longer an indicator of the source of the goods.  “Escalator” is a classic example of this loss of source identification.  As pointed-out by quuesq, same thing happened to "Kleenex".  Once upon a time, “Xerox” went on a campaign to try to get people out of the habit of using “Xerox” as a verb for this reason. 

To cut to the chase, if the XXXXX in “vintageXXXXX” is a strong mark and the goods are the same, IMO you have a problem.  You really should consult with a TM attorney with experience in internet TM law before the letter(s) turn into a complaint in US District Court. 

[antiques67]

are the goods the same if the goods i'm selling are circa 1936-1969

that's what i can't understand, does their trademark extend to old/used items that they are no longer making.

lots of other stores and resellers are selling the new items, but this isn't (or shouldn't be effecting their current sales) - of course i do understand the "consumer confusion" issue and that could be used against me no matter how clear i think i am being by saying circa 1936....

thanks!

[Zonath]

Trademark registrations typically cover 'classes' of products, and the likelihood of confusion analysis considers whether or not the products, lines of business, and channels of commerce involved are substantially similar, not simply whether or not the products are identical.  So even if the company no longer makes the products you're selling, if they're still marketing products in the same general class then the courts would probably find a high likelihood of confusion, even if they're not selling the exact same product you are.

[NJ Patent1]

antiques67:  To make Zonath’s post ruthlessly blunt:  a soft drink is a soft drink, a dress is a dress, tableware is tableware.  It doesn’t matter if the soft drink tastes and is packaged the way it did in the 50s.  It doesn’t matter if the dress or tableware looks like my long-since-deceased grandmother’s. 

You wrote: “that's what I can't understand, does their trademark extend to old/used items that they are no longer making?".  The short answer is probably yes.  The emphasis is, per Zonath, is on goods (soft drinks, dresses, tableware), not particular individual items or the date they were actually manufactured and sold.  If the market for “retro” tableware gets hot, “Wedgewood” might indeed want into the market (“zone of expansion” alluded to be others).  Back in the 70s, my wife was buying all this tableware (from “Pfalsgraf?) that looked like it could have belonged to GREAT-grandmother. 

What should I understand the difference, if any, between “old” and “used” to be?  If it is just “old looking”, i.e. having a retro design, it’s the same class of goods and TM infringement could easily lie.  If the goods are in fact “previously owned”, there is usually nothing wrong with saying “I sell used Coke(R) bottles “ or “used / refurbished Xerox(R) machines” (but note that R in the circle), or with offering a used Honda, no (R), for sale in the appropriate section of the NYT. 

If I recall, your concern is with your domain name, not an ad or a label on a good.  You noted you understand the “likelihood of confusion”.  Well, is there one?  I don’t know.  But what I do know is that litigation on the issue can get expensive (expert opinions, consumer surveys, etc.)  The analysis is fact specific, and your “intentions”, however sincere, are irrelevant to the issue of confusion.  Chevrolet dealers sell used cars. But vintage (i.e ’56 BelAir Nomad wagon) Chevys?  My “vintagechevys.com” might not create confusion (were Chevy a TM).  IMO lesser likelihood of confusion.  But “vintagewedgdewoodchina.com” ?  Hmm, is it previously owned, or a genuine new “re-issue” of grandma’s pattern? 

If you are selling previously owned (used) stuff, your lawyer can probably work out a deal.  If you are selling newly-manufactured recreations, expect a tougher fight, depending on the “goods” involved.  Good luck. 

[antiques67]

This is a hopeful answer even though you are being very blunt. In this case the items are old, as in circa 1936-1969 and I have every item labeled as such. I am in the process of adding a copyright symbol of circled letter R after every instance of their trademark name. I am also complying with their request to not use their trademark name as a noun, but always as an adjective as they requested... "wedgewood(R) pottery" for example.

The only thing left is the domain name. I am selling (for argument sake) vintage wedgewood and have bought the domain "vintagewedgwoodpottery.com". Clearly on the top of my website I am now stating that this is vintage items circa 1936-1969. Every instance of company X trademark name as an r after it, is never used as a noun and there is a disclaimer on every page that I am not affiliated with the company that owns X.

Not much else I can do but sit and wait and see if that appeases them I guess. It's my understanding that since they sent a certified letter only with expectations that it isn't a legally binding document. If they wanted to enforce anything further (say making me change my domain name) what kind of correspondence from them should I be expecting?

[Zonath]

Well, if they wish to proceed to the point where they would be attempting to go further to enforce their rights, you would expect to receive either a knock on your door and a process server handing you a summons to appear in some court somewhere (almost certainly a federal court), or else you'd receive in the mail a copy of the complaint and summons along with a service waiver request, a waiver form to fill out, and a prepaid envelope in which to return that form.

On the other hand, if they wish to simply challenge your ownership of the domain name using the UDRP, you would expect to receive an email sent to the email address listed as the registrant contact for your domain name in the whois information for that domain name, containing the text of the complaint against you. This would be shortly followed by a copy of the complaint being sent to you through regular mail at the address you've listed as the registrant contact in your whois information.  If others are listed as the administrative, technical, or billing contacts for you domain name, you would expect that they will be sent copies of the complaint as well.

This is all assuming, of course, that their next step would be a lawsuit or UDRP arbitration, and not simply another round of certified letters.

[JSonnabend]

Well, I'll jump in and say I think Zonath and NJPatent1 have overstated (and perhaps misstated) the law.  As a general proposition, the use you detailed may very well be nominative.  The fact that a mark is "strong" doesn't change the equation.

Furthermore, the "provisions in law" for re-assigning domains are essentially the UDRP and ACPA, neither of which would, properly applied, prohibit the type of use you described.

All that said, the other posters are correct when suggesting that you might be sued regardless of the merits, and so you have to consider that from a practical perspective.

- Jeff

[antiques67]

Could you explain what you mean by "nominative"?

I have looked through information about UDRP and ACPA and don't find anything there that could threaten the use of my domain (vintagewedgewoodpottery.com). (hypothetical domain, not the real domain at issue)

The biggest sticky point still seems to be in the use of a trademarked name in a domain. In my case it is bastardized into a general term, say wedgewood was turned into wedgewoodware. But the name still contains a trademark and the site is commercial. Although the products I'm selling on my sight are strictly antique collectables and everything has a date and is labeled as vintage. Their argument against me would have to follow the "confusion" clause, but how do you prove that in a court of law? One person may be easily confused while another more astute observer may not be confused what-so-ever.

[JSonnabend]

First, please edit your last post to remove the actual domain name.  It can harm you to have it posted here.

Second, "nominative" means "to refer to the actual thing" (i.e., to refer by name).  Thus, if you are selling genuine vintage Ford Mustangs, for example, you can say that using the marks FORD and MUSTANG.  You can even use that in the domain, by and large.

You should speak directly to a lawyer about your specifics (the advice above being general), and ideally have a lawyer respond for you so you don't get pushed around unnecessarily.

- Jeff