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[gobeyond]

Hi,

I registered a domain name in 2000 for my business.  For privacy purpose, I will call this domain name: RealHelpdesk.com

I registered my business as Real Helpdesk Corporation with my state in 2004.  As of now, I only conduct business within my state

I did a trademark search and found that someone in a different  state has trademarked the phrase Real Helpdesk in the 1994.

Will have face any potential trouble if I keep running my web site: RealHelpdesk.com and advertising my business as RealHelpdesk.com?

What are the Do's and Don't's that I should be aware of while doing business to avoid infringing on their trademark?

Can that company someday come to me and require me to give up my domain name?

I am new to this and I apologize if these questions have been answered before.  Thanks in advance!

Terry

[Isaac]

"Will have face any potential trouble if I keep running my web site: RealHelpdesk.com and advertising my business as RealHelpdesk.com?"

Normally the answer to such a question is maybe, but because you phrased the question to ask about potential trouble, I can definitively say yes.

Your described activities certainly suggest that cybersquatting and trademark infringement risks ought to be evaluated, but without knowing the details and the actual mark involved (which you should not post here) I cannot be more specific than that.

[gobeyond]

As of now, the company that has trademarked the phrase "Real Helpdesk" is using a different web site address which is their true business name.  They offer a service called "Real Helpdesk" attached with a (R).  It seems like they are doing business inside a state on the east coast while I am in the midwest.

I have no intention of selling my domain name for a profit.  My web site has been up and running for 5 years.  

There is a clause in the trademark listing:

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "REAL" APART FROM THE MARK AS SHOWN

Not sure what this means.

What are the things that I shoud NOT do in order to avoid trademark infringement?  Since I have the domain name, is it legit to market on my website as "RealHelpdesk.com"?

Many thanks for your insights!

Terry

[JSonnabend]

First off, I don't agree with Isaac that cybersquatting is implicated here, as I don't see the requisite bad faith registration.  From your stated facts, you appear to be operating strictly in good faith.

As for what to do to avoid infgringement, the simple answer is: change your brand.  Short of that, assuming you and the other party are in the same or related fields, you can't do much to avoid infringement except by staying geographically removed from the senior user.  Of course, assuming a valid registration by the senior user, if he decides to expand into your territory, you may be forced to give up your mark.

As for the disclaimer, it doesn't mean a lot for present purposes.  The registrant has simply stated that he won't go after people solely for using the word "real" in their marks.

- Jeff

[Isaac]

"First off, I don't agree with Isaac that cybersquatting is implicated here, as I don't see the requisite bad faith registration.  From your stated facts, you appear to be operating strictly in good faith. "

I don't think we are disagreeing so much as cutting off the analysis at different points.   The lack of initial evidence bad faith might not prevent someone from raising a fuss.   It's also the case that some fairly funky indications of bad faith have been accepted in some dispute resolution proceedings including simply not making a search for an existing registration.  In some cases the evidence of bad faith has involved activity occuring after the C&D letter stage.

I'm personally not willing to make a call on this issue without knowing what marks are involved, so I'd flag it as an open issue.

[gobeyond]

Would it be possible for me to trademark my domain name: RealHelpdesk.com, given someone else has trademarked the phrase: Real Helpdesk?

If possible, what do I need to do/prove/show to make a convincing case?  What are the general outcomes for trademarking domain names in similar situations?

Thanks for all your responses!

Terry

[Isaac]

Mr. Sonnabend recently responded to a query titled "Do I need to trademark my domain? "   That touches on some of the issues with trademarking a domain name.

In this particular case, the highly similar existing trademark might well be an obstacle to your own efforts.

[JSonnabend]

including simply not making a search for an existing registration

Wow, that sounds like a bad one.  I'd love to read it -- any chance you have the cite handy?

- Jeff

[Isaac]

I did some homework after one of our past discussions on ACPA/UDRP and ended up looking through an archive of arbitration decisions.   I found the reading pretty interesting, but then I'm probably a little bent.

This opinion linked to below is not from that archive, and
I don't know if it points to the case I remember, but it does cite the same principle.  

http://www.rcakl.org.my/pdf/Decision%20rca1.pdf

While not searching was considered to indicate bad faith under the circumstances, it was not the only evidence.

[JSonnabend]

Would it be possible for me to trademark my domain name: RealHelpdesk.com, given someone else has trademarked the phrase: Real Helpdesk?

Terry -

Sorry I missed your question when going off on a tangent with my (slightly bent?) colleague.

The short answer is, you'll need to show either: (1) that you were using the mark first; and/or (2) that the other party's use and yours would not be likely to create confusion between you and them.

- Jeff