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Author Topic: Help PLEASE!! possible standard character Trademark infringment  (Read 544 times)

deandraalex

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HI There,

I have a Standard Character Trademark and I am dealing with a few folks and a couple of entities that are infringing.  One guy refuses to surrender the URL that I've had since 2012. Made a mistake and lost it for a month and he swooped in and got it 3 moths ago.  He is about to release a book and is saying he will be selling t-shirts that say my trademarked characters.

The domain name is my registered trademark and the name of my company, my brand, and services i provide.

Secondly there is a multi million dollar company that is also selling apparel with my trademarked characters. do i potentially have a case?
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artchain

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You trademark registration does not give you exclusive use of the term.

First, someone CAN use the domain name corresponding to your trademarked term, provided that:

  • They are not violating your trademark (see below), and
  • They are using the domain in good faith.  In other words, they can't grab the domain just to force you to buy it back from them - they must have a legitimate use.

If you believe the domain is not being used in good faith, there is a process to request that it be transferred back to you.  Do a Google search for UDRP.  I will warn you that it is a long process, and you will need an attorney (or at the very least, someone who has been through the process).

Now, as far as your trademark rights, if they are using the name for good or services in the same class as your trademark registration, and their use is likely to cause confusion, you may have a legitimate case of trademark infringement.  Again, you will need to consult an attorney.

Note that (as I said above) your trademark does not give you exclusive use of the term.  For example, Delta faucets and Delta airlines co-exist, because they are in different classes, and nobody is going to confuse one for the other.

deandraalex

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You trademark registration does not give you exclusive use of the term.

First, someone CAN use the domain name corresponding to your trademarked term, provided that:

  • They are not violating your trademark (see below), and
  • They are using the domain in good faith.  In other words, they can't grab the domain just to force you to buy it back from them - they must have a legitimate use.

If you believe the domain is not being used in good faith, there is a process to request that it be transferred back to you.  Do a Google search for UDRP.  I will warn you that it is a long process, and you will need an attorney (or at the very least, someone who has been through the process).

Now, as far as your trademark rights, if they are using the name for good or services in the same class as your trademark registration, and their use is likely to cause confusion, you may have a legitimate case of trademark infringement.  Again, you will need to consult an attorney.

Note that (as I said above) your trademark does not give you exclusive use of the term.  For example, Delta faucets and Delta airlines co-exist, because they are in different classes, and nobody is going to confuse one for the other.

Yes it is in the same class. More Than An Athlete is what I have trademarked. Not only is it my business name but it is in the same class; sports, youth sports, recruit counseling, both trying to promote how athletes are more than just athletes and how to achieve being more than....  They are selling T-shirts bearing "More Than An Athlete". I also have T-shirts that I sell that say More Than An Athlete as well.
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MYK

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First, you should remove the identifying information from your post.  If they are worried about you suing them, they can find this thread with a web search.

Second, what country are you in, what countries did you register in, what countries are the other parties in, and where (if anywhere) have they registered?

Third, are you sure that your use of the trademark predates theirs?

Fourth, what communications have you had with the person who registered the domain name after you let it lapse?  Have they made any offers to sell, or welcomed any offers from you?  Do you know if they were aware of your sales and prior use of the domain when they registered it?

Regarding the trademark rights, I would respectfully quibble with Artchain regarding exclusivity -- you DO get exclusivity, within the geographic territory you registered or sold in, for those goods and services that you sold and/or registered.  BUT (at least in common-law jurisdictions, although some civil law jurisdictions have a similar rule) you also have to be sure that your rights predated the other parties' rights.  Some of these areas are grayer than others;  things can get very messy when the parties are in different countries or have different goods.

If the major corporation sold the goods starting in 2008, and you filed for registration in 2015 and somehow got registered, you're not going to beat their prior use.  If you registered in China and they're in Europe, you're out of luck.  If your goods-and-services don't cover the ones they're selling, then they can probably do that.

As far as the domain name, has the other party made any extortionate sale offers to you, like "I'll give it back for $50,000!"?  That gets frowned upon by UDRP arbiters.  Is the other party's usage before or after yours?  Are they in the same country as your registration?

You CAN do the UDRP yourself, but unless you have some legal background, you probably won't be able to figure out all the possible arguments, and if you do a crappy job then you're wasting the US$1500 (minimum) that the UDRP will cost you.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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