Product-v-Service

[powerx]

What is the name of your state (only U.S. law)? CA & FL.

Company A (CA) offers their software as a product B - both hosted on the internet on separate domains. Company A is hosted on their domain and their product B is hosted separately on its own domain name. They never offered their product as a service - the product was used just for membership signups and managing the data even though it is hosted on a separate domain. Its the reason why we see things like Powered by companyA, Copyright companyA, Widgets by companyA, Support Emails from companyA, etc - everywhere including on the product's website and nothing comes from productB except the employment data (that comes with a tagline saying "Powered by company A") that members publish on their websites. In my opinion, their product B is just a database software hosted on the internet and not a service. The company and product exist for about 4 years. They do not have a trademark registration for their product (do not even use the TM/SM symbols) nor do they have a company on the name of their product.

I (FL) registered a domain name a year ago that is similar to their product name with one vowel short. I do not have a trademark for my domain/service either. I do not own a business under my domain name, yet. I used my domain name as a service (classification 35 & 42) listing/publishing their jobs from their own productB to generate click-through income. Since I worked hard on promoting my site, it did well with traffic, etc and they noticed my domain name in their database and immediately filed for a servicemark of their productB in clssification 42 instead of as a trademark in classification 9 - after I used the name as a service in interstate commerce, after I made a little money out of my service and duly displaying the "SM" symbol from the beginning - trying to block me out. On the servicemark application, they described their goods and services as "IC 042. US 100 101. G & S: Application service provider (ASP) featuring job boards created by others; hosting of job boards. FIRST USE: 20060124. FIRST USE IN COMMERCE: 20060124".

Recently, just before they were supposed to make a payout of my first income, they blocked my membership from displaying my jobs and generating click-through income from the displayed jobs of others saying I violated their trademark and demanding me to deactivate my account, stop using the mark, domain name, etc and asking me how I would like to proceed. Obviously, they do not want to pay the $100 I would have made by now had they not blocked my membership account - to prove that I did not make any income in interstate commerce before they filed their servicemark application. Does it matter if I receive money or not if I can offer evidence of their acts blocking my membership from generating the last $10 to qualify for the first payment? Like Accrual basis in accounting - income is claimed when it is made not when it is received? Are their attempts called reverse domain name hijacking and trademark hijacking? I know from my limited knowledge of IP Law that, a mark can be claimed even if it was already used by others as long as it does not conflict with others' goods/services, i.e. in a different classification - which is precisely what I did. Did they not make false statements desperately and filed their application in a jiffy to fraudulently seek a servicemark out of a trademark under a wrong classification? Do they have a case?

I take IP seriously and do not want to sell my domain - I want to oppose their trademark filing aggressively. Currently, I am in the process of publishing their competitors' jobs and continue my use of the mark. I wrote them an email saying suspending my account does not do any good for their image and creates problems for them. I asked them to refrain from playing scare-tactics about their non-existent Federal servicemark registration and demanded them to restore my account to normalcy. I told them my doors are open with other options. I added that I am familiar with the IP Law and would proceed legally.

I have evidence of my statements, claims and facts. Do I have a case? What are my options? How should I proceed? What happens if their application gets approved and I keep using the mark as a service? Can they sue me for the period from now to the date of registration for using the mark where there is a pending application for the mark? I know trademark filings used to take over a year before they were registered until 2006. How long are they taking now so I can keep an eye on publication of their mark for opposition. They are a huge company, have a lawyer but I cannot afford a lawyer. Please advise...

TIA

 

[divgradcurl]

Let me see if I have this straight -- you are using their product as a backend to your service, and you are using a variation of their product or company's name as your own name?

A couple of points. First, registration does not equal trademark rights. Trademark rights arise through use in commerce, not registration. If they were in business before you, they likely already had rights to their name, and it would appear that you, the "junior" user of the mark (or a very similar version of the mark) are the one that may be the bad actor here.

The fact that they registered their mark after seeing your site pop up in searches (if that's indeed what happened) doesn't mean anything, really. It would appear from what you have written that, registration aside, they are the "senior user" of the mark, and that gives them more rights to the mark than a junior user.

Also, the delineation between a "service" and a "product" is not usually a bright-line or clear-cut difference. Something can easily be both a product and a service.

I have evidence of my statements, claims and facts. Do I have a case? What are my options? How should I proceed?

What you should do is talk with a lawyer, who can review all of the actual facts of your situation and advise you accordingly. If the other company had established rights to a mark prior to your first use in commerce, and your mark is a "confusingly similar" variation, then it doesn't seem like you have much of a leg to stand on. But a trademark lawyer, with access to all of the relevant facts in your situation, will be able to advise you.

What happens if their application gets approved and I keep using the mark as a service?

Nothing. At least, nothing that couldn't happen anyway without the registration. Because the mark wasn't registered before you started using it, any of the additional recourse offered by a registered mark can't be asserted against you.

But if they can prove they had common-law rights to the mark before you started using a confusingly similar mark, then they could sue you for trademark infringement anyway.

Can they sue me for the period from now to the date of registration for using the mark where there is a pending application for the mark? I know trademark filings used to take over a year before they were registered until 2006. How long are they taking now so I can keep an eye on publication of their mark for opposition.

Again, registration is irrelevant to this particular situation.

If you were clearly the senior user of the mark, then you would want to oppose the registration to protect your interests going forward. But since, by your own admission, you are not the senior user, there isn't any reason (or basis) for your opposition.

They are a huge company, have a lawyer but I cannot afford a lawyer.

You really need a lawyer here. Otherwise, what you need to do is get yourself to a bookstore or library, and try and find a general book on trademarks for laypersons -- based on what you have written, I think that you will find that your theories are quite backwards, and you are really the one who has gone infringing someone else's mark. If you don't believe that is the case, or have other facts that suggest that this is not the case, and you still won't hire a lawyer, then you will need to educate yourself on trademark law. Get to a law library, maybe start reviewing some of the chapters from McCarthy on Trademarks, that's the standard treatise in this area.

 

[powerx]

Their application was filed just a month ago and registration is not completed yet (under process).

I was using the name of their product as the name of my service. I did not use the name of their company through which they offer services as the name of my service.

You said something can be a product as well as a service. From the fact their product name does not appear in their service (such as support emails not originated from the product's name/website but from company A, Powered by company A taglines, etc) - don't these make their product B a product fit to be filed for a trademark in class 9 instead of servicemark class 42? Can I prove this is fraudulent to hijack my mark?

As a matter of fact, they filed in class 42. On further examination, I concluded that my service precisely belongs in class 35. I spoke with the USPTO and they said I would not infringe on their IP if I file in a different class (35).

Do I have a case now?

Will they come after me for the domain after getting their registration?

What are common law rights?

TIA for your time.

 

[divgradcurl]

Their application was filed just a month ago and registration is not completed yet (under process).

Again, the registration is really irrelevant here.

I was using the name of their product as the name of my service. I did not use the name of their company through which they offer services as the name of my service.

You said something can be a product as well as a service. From the fact their product name does not appear in their service (such as support emails not originated from the product's name/website but from company A, Powered by company A taglines, etc) - don't these make their product B a product fit to be filed for a trademark in class 9 instead of servicemark class 42? Can I prove this is fraudulent to hijack my mark?

Trademark infringement doesn't hinge on whether something is a product or a service. Trademark infringement is based on a "likelihood of confusion" analysis -- basically, you do a multi-part analysis to determine whether or not a typical consumer of the product or service would be "confused" as to the origin of the product or service.

In your case, if a typical consumer would see your mark for your service, and assume that this meant that the mark holder for the product was the provider of the service, that's the sort of confusion that results in liability for trademark infringement. It's more complicated than this, of course, but this is the general idea.

Also, don't confuse URL's with trademarks -- they are not the same, and owning a URL does not necessarily give rise to any rights to a mark.

As a matter of fact, they filed in class 42. On further examination, I concluded that my service precisely belongs in class 35. I spoke with the USPTO and they said I would not infringe on their IP if I file in a different class (35).

I can guarantee that's not what they said. They said that if you file in a different class that you could likely obtain a mark, not that a mark filed in one class cannot infringe a mark filed in another class. Obtaining a registration, and determining liability for infringement, are two entirely separate bodies of law.

The USPTO classes exists for the sole purpose of determining who is entitled to a registration. They have essentially no bearing on liability for infringement. Infringement is based on likelihood of confusion, nothing more.

Do I have a case now?

Again, there is no way to tell. From what you have written, it seems that they would have the case against you, not the other way around. But there may be facts that would change that analysis.

Will they come after me for the domain after getting their registration?

Domain names are quite separate from trademarks, in most cases. It's typically difficult for someone who registers a mark to go after URL's that existed before the registration of the mark. But, in this case, if there were preexisting common-law trademarks, that will potentially change the analysis.

What are common law rights?

Common-law trademark rights are those rights that exist without registration. A registration gives you certain expanded rights, but the underlying trademark rights arise from the common law.

But the thing to keep in mind -- trademark rights arise through use of a mark in commerce. Period. A registration doesn't create any rights to a mark. If you file for a registration, but never use the mark in commerce, you have nothing you can enforce -- the rights do not vest until the mark is used in commerce.

Conversely, it's possible to have rights -- even extensive rights -- to a marl without ever obtaining a registration. Not all marks are registrable in the first place. For example, the trademark registrations related to the Washington Redskins have been, at various times, taken away because the subject matter was not registrable (it was considered a racist mark, and therefore not registrable) -- they recently won their most recent case, allowing them to keep their registration. But even if they had lost, they still would have had nearly the same protections, because the actual rights to the mark arise from the consistent use of the mark in commerce.

This is the point you seem to be missing. They may be trying to make sure that they protect their marks in the future by filing for this registration, but that doesn't mean that they don't already have rights to the mark, and, in any event, if they try and enforce their mark against you, the test will be "likelihood of confusion," not what class is what.

 

[powerx]

I sent you links to my site, their sites, the serial number of their filing through a private message. Please go through them and advise me if I should continue using the mark, bring back the website live, launch a company, etc or give up. Their registration may take more than a year to complete.

Thanks much for your time...

 

[powerx]

Here is the URL for your private messages:

https://forum.freeadvice.com/private.php

Further, my service belongs in this class 35:

Registrant: DICE
IC 035. US 100 101 102. G & S: computerized services in the nature of providing access to employment recruiting data bases. FIRST USE: 19900702. FIRST USE IN COMMERCE: 19900702
Serial No. 75115743
Registration No. 2158101

Please advise...

TIA

 

[divgradcurl]

I sent you links to my site, their sites, the serial number of their filing through a private message. Please go through them and advise me if I should continue using the mark, bring back the website live, launch a company, etc or give up. Their registration may take more than a year to complete.

Thanks much for your time...

I apologize, but I cannot look at your specific information. I am certainly willing to answer generalized questions on the board, but I cannot review specific details about yours, or anyone else's, situation.