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Author Topic: Single-country trademark protection for website  (Read 241 times)

fnrmnvgr

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Single-country trademark protection for website
« on: 08-04-17 at 08:53 pm »

Let’s say you have a website and you get a US trademark for its name in all of the relevant classes. What protection does this single-country trademark provide for a website?

I’m slightly confused because I asked a lawyer what would then happen if someone from, say, the UK subsequently registered an identical trademark for their company/website via the UK trademark body, would they have any legal right to demand the closure/alteration of our website?

He said that If I have no UK trademark rights and a third party obtains such rights then they may prevent me from selling my goods/services into the UK via any website.

Now I can see how that makes sense if your business sells a physical product - so, in this scenario you can sell your product anywhere in the US but you cannot ship it to the UK.

But if your product/service is merely your website’s content (you make money from it through advertising/affiliate schemes, perhaps), what happens then? You have the US trademark (and own the domain), someone else has the UK trademark for the same name… does this mean that you will have to alter/take down the website, block it for UK visitors, etc.?

Anyone have any ideas what happens in this scenario?
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MYK

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Re: Single-country trademark protection for website
« Reply #1 on: 08-04-17 at 10:22 pm »

Let’s say you have a website and you get a US trademark for its name in all of the relevant classes. What protection does this single-country trademark provide for a website?
None.  Domain names are not trademarks, trademarks are not domain names.  It's like asking whether getting a trademark will protect you from being sued for infringing a patent.

To prevent squatters from grabbing a domain name similar to or identical to someone's preexisting trademark, the UDRP system gives trademark owners a low-cost (compared to court) way of taking a squatter into arbitration over domain ownership.  Note the key word PREEXISTING.

I’m slightly confused because I asked a lawyer what would then happen if someone from, say, the UK subsequently registered an identical trademark for their company/website via the UK trademark body, would they have any legal right to demand the closure/alteration of our website?
No, because their mark didn't predate your ownership of the website.  However, they can stop you from selling under your trademark in the UK if your goods fall within the goods/services that their UK trademark covers and if your rights IN THE UK don't predate theirs.

He said that If I have no UK trademark rights and a third party obtains such rights then they may prevent me from selling my goods/services into the UK via any website.
Exactly.

But if your product/service is merely your website’s content (you make money from it through advertising/affiliate schemes, perhaps), what happens then? You have the US trademark (and own the domain), someone else has the UK trademark for the same name… does this mean that you will have to alter/take down the website, block it for UK visitors, etc.?
Maybe.  It depends on whether the website falls within their goods/services list.  It gets messy.  The UK is a common-law jurisdiction, so rights mostly depend on first use.  If your website predates their registration, and as long as you can show that you had UK visitors prior to their registration, you would likely be ok, and you may even be able to sue to have their trademark cancelled.  If you want a real answer, you would have to ask a UK trademark solicitor, which I am not -- "these off-the-cuff remarks do not constitute legal advice."

In other countries that have trademark systems based solely on registration, e.g. Brazil and China, there has been a problem with after-the-fact trademark registration and suing over sales of goods.  However, it's largely gotten quashed because governments have mostly recognized that those sorts of shakedown scams shouldn't be allowed.  There may still be some problems, haven't heard of any lately, haven't really been following the drama though.
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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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