website domain brand name has been trademarked by another company.

[ctguitarguy]

So I have a site that was a comic strip site and also covered gaming and animation topics. We have been working on revamping the site for the last two years, and we own our brand in the form of a domain name and have done so for many many years before this company came along and trademarked our brand.

We are not an LLC, and we simply collected ad revenues from a small ad agency and one of us simply collected the cash via paypal, we did however sell items at conventions under this brand name (including clothing like shirts for example). A company has since taken our brand name, which is our domain name, and trademarked it and simply put it on a domain name that is in the business of selling denim jeans and other such products.

Let's just say our site name is called "angrysnake.com" and we have been running this site for many years, almost 10. and then this company who makes jeans comes along and trademarks the name "angry snakes" and then registers a site for that business and trademark and puts it on angrys.com to sell said clothing. What am I to do
? Am I out of luck? We also intended to sell shirts and other goods eventually on our own storefront down the line.

Our site is primarily a blog driven community geared towards video games, entertainment, and opther parts of fandom. This company who bought the trademark "angry snakes" (not out actual name) has a denim jean business, and I really just don't know what to do...I would like to not have to start over with a totally new site and domain/brand as we have had this domain and have cultivated this brand for a long time and we are partial to it.

 

[quincy]

So I have a site that was a comic strip site and also covered gaming and animation topics. We have been working on revamping the site for the last two years, and we own our brand in the form of a domain name and have done so for many many years before this company came along and trademarked our brand.

We are not an LLC, and we simply collected ad revenues from a small ad agency and one of us simply collected the cash via paypal, we did however sell items at conventions under this brand name (including clothing like shirts for example). A company has since taken our brand name, which is our domain name, and trademarked it and simply put it on a domain name that is in the business of selling denim jeans and other such products.

Let's just say our site name is called "angrysnake.com" and we have been running this site for many years, almost 10. and then this company who makes jeans comes along and trademarks the name "angry snakes" and then registers a site for that business and trademark and puts it on angrys.com to sell said clothing. What am I to do
? Am I out of luck? We also intended to sell shirts and other goods eventually on our own storefront down the line.

Our site is primarily a blog driven community geared towards video games, entertainment, and opther parts of fandom. This company who bought the trademark "angry snakes" (not out actual name) has a denim jean business, and I really just don't know what to do...I would like to not have to start over with a totally new site and domain/brand as we have had this domain and have cultivated this brand for a long time and we are partial to it.

From what U.S. state are you posting, ctguitarguy (Connecticut?), or, if not in the U.S., from what country are you posting?

 

[ctguitarguy]

I am posting from connecticut. The other site seems to have been registered by some business in LA california. Now this domain has been owned by my friend since 2005, and had been an active site since 2008-2009 until the last year 1/2 when we took it down to revamp it (which is of course when this other site came into being). We are not an LLC yet, but we have been partners, and he has owned this site for a long time.

It's just frustrating because we have a lot built up in this brand, even though we have nothing to do with denim jeans....we would eventually like to be able to sell merch. I just am trying to decide if we should start from scratch with a new brand or continue with the aged domain and brand we already have despite what has happened with this other company trademarking it for there denim jean/clothing business.

 

[quincy]

So I have a site that was a comic strip site and also covered gaming and animation topics. We have been working on revamping the site for the last two years, and we own our brand in the form of a domain name and have done so for many many years before this company came along and trademarked our brand.

We are not an LLC, and we simply collected ad revenues from a small ad agency and one of us simply collected the cash via paypal, we did however sell items at conventions under this brand name (including clothing like shirts for example). A company has since taken our brand name, which is our domain name, and trademarked it and simply put it on a domain name that is in the business of selling denim jeans and other such products.

Let's just say our site name is called "angrysnake.com" and we have been running this site for many years, almost 10. and then this company who makes jeans comes along and trademarks the name "angry snakes" and then registers a site for that business and trademark and puts it on angrys.com to sell said clothing. What am I to do
? Am I out of luck? We also intended to sell shirts and other goods eventually on our own storefront down the line.

Our site is primarily a blog driven community geared towards video games, entertainment, and opther parts of fandom. This company who bought the trademark "angry snakes" (not out actual name) has a denim jean business, and I really just don't know what to do...I would like to not have to start over with a totally new site and domain/brand as we have had this domain and have cultivated this brand for a long time and we are partial to it.

First, you are not necessarily "out of luck."

But you did have the option of opposing the registration of the "angry snake" trademark when the application was published for proposed registration, if you felt the mark infringed on your long-time use of the name. You had 30 days to file a written opposition.

If the mark has already been approved for placement on the Principal Register, however, you would now have to file a cancellation petition with the USPTO. See 15 USC Section 1064. Or, if the mark was placed on the Supplemental Register, you can request that the USPTO cancel the registration. See 15 USC Section 1092. And you might want to do this if the other company's use of the mark cuts into your business revenue, or can cause harm to your business, or clearly confuses consumers into thinking the other company is yours.

It is important to note that, in the U.S., registration of a mark is not necessary to gain trademark rights. You gain rights to a mark by using the mark in commerce. So, if you are the "first user" of the "angry snakes" name, your rights may very well trump those of the new company. It is also important to note that a domain name does not gain trademark rights if it is not connected to the sale of products or services.

It is also possible that, since the marks are being used for different purposes, both marks can peacefully coexist. If there is no consumer confusion shown with the similar domain names, both you and the other company can continue to use the names you currently have.

I cannot tell you whether it is smarter for you to "start from scratch" or whether you can continue using the name you have used for 10 years. That is a decision you will have to make. It is a decision best made after you consult with an attorney in your area, who can review all of the specific facts.

What I have provided is not, by any means, a complete picture of a trademark dispute or what is or could be involved in your situation. I have provided a very brief look at some of what can be looked at. There is far more to consider.

Good luck.

 

[ctguitarguy]

Thanks for responding. The domain was previously owned prior to 2005 but was not a commercial site in any way (not even via ad revenue). My friend bought it in 2005. and the site site was live the entire time but didn't become functional till about 2009. It was mostly a webcomic/blog site with a small community that made small sums of money via an independent ad agency that paid via paypal. These guys sell denim clothing wholesale to other businesses, so they definitely do commerce. We mostly just had ads on our site, as we were moslty an online comic and community blog type site. (we have every intention to sell clothing however and that is concerning (not denim) ).

The reason we didn't oppose it, was because we had no idea it was in existence until it was too late. Again we are not an LLC yet, but my friend has owned this domain since 2005. As far as there TM goes (I changed the name to "angry snakes" so as to not divulge the actual brand name...here it is: (it appears to be principal sadly)

Word Mark ANGRY SNAKE
Goods and Services IC 025. US 022 039. G & S: pants, denim pants, skirts, jackets, vests, sweaters, shorts, mini-skirts, dress shirts, dresses
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85870102
Filing Date March 7, 2013
Current Basis 1B
Original Filing Basis 1B
Published for Opposition July 23, 2013
Owner (APPLICANT) , ANGRY SNAKE CORPORATION CALIFORNIA #121 1458 S. San Pedro St. Los Angeles CALIFORNIA 90015
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[quincy]

From what you have posted so far, I personally see no trademark conflict between your "angrysnake" domain name for your online comic and community blog and the denim company's registration of the "Angry Snake" trademark to identify their company and their goods. A legal dispute would likely arise, however, if you decide to market clothing under the same name.

That said, the Angry Snake company could find your domain name a problem and, if they see it as a problem, then it becomes a problem for you. Whether they see it as a problem could depend on if it is apparent that consumers are confused by your use of the name or consumers erroneously believe your website is connected in some way to the clothing brand.

Again, however, everything is law is fact-dependent. You are probably best-served by having these facts personally reviewed by an IP attorney in your area. The attorney you see can better outline for you your options and your legal risks. You can then make an informed decision about what to do.

Good luck.



(thanks for your edit, ctguitarguy )