Dealing with a possible patent troll for a new product name

Started by MrStone, 05-01-17 at 09:56 PM

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MrStone

I developed a new product which has not been released (and trademarked) yet.  The website of what the products name will be was vacant however someone did have the name registered with GoDaddy.  I reached out to the person who had the website and asked if he would be willing to sell the website.  He responded in a legal sounding email stating that the name has been active 20+ years, and all business use of with name in any form and/or purpose is subject to product name copyrights as well as all first of use registered trademark rights as per USPTO laws and regulations and since it was not an active business he would be willing to sell me his business since his product was tied to the name and would like royalties.  The first thing I did when I read the email was look at USPTO for copyright and trademarks of the name and there was nothing.  A google search of the product name, provides that there is nothing with the name.  What are my options now?  Is he just a troll?  Should I immediately trademark my product name?


Robert T Nicholson

First, you are confusing patents, copyrights, and trademarks.  They are very different things.

What you are talking about is trademark rights, which identify the source of goods and services.  Copyright law does not protect short names or phrases, although it can protect graphics that are used in a trademark.

Trademark rights are acquired through use in commerce.  You can't use identical, or confusingly similar names to those already in use for a particular class of goods of services.

Registering a trademark provides additional protections, but is not required.  In general the first to use the mark has precedence.

If the person who owns the domain has used the name in commerce to identified goods or services that are similar to yours, then that person owns the trademark rights.  (Although, depending on how long the company has been "inactive," he may have lost those rights.)

Also, the current owner cannot claim rights to a trademark for "any purpose."  Conflicts arise in the case of similar goods or services, but otherwise the same name can be used for different classes of goods or services (for example, Delta faucets and Delta airlines).

Before investing in building a brand around a specific word or phrase - especially when there is a claim of prior rights - I suggest consulting with an intellectual property attorney.
This post is provided for information purposes only, and does not constitute legal advice.

Robert Nicholson Consulting | Copyright Safeguard | ED Treatment Center



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