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does USPTO Protect internet domain names?

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kevinfor

Junior Member
What is the name of your state? WA CA & DE

Several years ago we hired a design company that specializes in logo's to create a unique logo for our company.. which we have been using for the last several years.. and registered our company domain name (ie: mycompany.com) for our website.

We decided to file (and was approved) Trademark protection with the Secretary of State office in about 3 states where our company is incorporated (or has foreign corp status) for both the actual logo & company name.

We then filed with U.S. Patent & trademark office.. they assigned a "serial #" but had some concerns that our company name involving the word "athena" for a talent agency.. could be confused with a career (job) counciling company ... long story short.. since I did all the research myself (with help from a law student) we replied back to USPTO quoting several legal cases where "there was no likelyhood of confusion" totally differn't locations in the phonebook (juxaposition etc) and we are located on opposite sides of the country.. our paths to never meet.

USPTO agreed in writting we were right YEAH!!.. only to find something else wrong.. I replied back again.. wanted examples of our "use in business" we gave copies of advertisment we ran in various magazines etc.. after 18 months..USPTO "more concerns" I said "this is nuts" I gave up.. "these people have literally nothing better to do" (since USPTO actually outsources this to local attorney's I got the impression the attorney assigned to the case, resented dealing with me .. -vs- another attorney or law office) Since I didn't reply to her letters anymore.. they abandonded our application (the graphic & serial# are still on uspto.gov but it's been about 4-5yrs.

my question is.. given that the item is placed on USPTO site & assigned a serial# (not a registration#) but it is registered as a trademark with Sec of State's office in several states.. does this not in fact give us some protection from someone trying to register our exact company name or show evidence that were using it in business.. ? if we are at an abandoned status .. can we somehow reopen the issue if we wanted to pursue this again.. or do we have to start all over again..

In addition since we own the domain mycompany.com mycompany.org etc.. we would like to also prevent someone else from registering mycompany.co.uk or mycompany.eu (european community) do we actually have to file more paperwork for Europe & EC trademark (which means hiring some foreign attorney) or can we just continue the way we are.. and if we find a company in the UK/EC starting to use the same name.. we can use our current USA registrations as proof of "first use" with the Internet domain name register, to get the name taken off them.. or do we then have to file new trademark application in europe?

Doesn't this whole thing come down not to "trademark registration" but rather "who can prove they were first using it in business" the logo is unique.. I don't think we will have an issue with that.. but the business name.. containing the word "athena" might be an issue.. I just don't want to spend $10k -$20k on this issue.. or hire foreign attorney's etc.

any thoughts?

kevin
 
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divgradcurl

Senior Member
my question is.. given that the item is placed on USPTO site & assigned a serial# (not a registration#) but it is registered as a trademark with Sec of State's office in several states.. does this not in fact give us some protection from someone trying to register our exact company name or show evidence that were using it in business.. ?
The registrations with the Secretary of Statee's offices in the various states may be used to show preexisting use in those states but will not prevent someone else from federally registering the mark, so long as they do not intend to compete in the states where you already claim the mark.

The abandoned mark is meaningless -- all it means is that someone once tried to register the mark.

we are at an abandoned status .. can we somehow reopen the issue if we wanted to pursue this again.. or do we have to start all over again..
Abandoned marks can rarely be reopened, and usually then only when the USPTO made a mistake. You'll need to start all over again if you want a federal registration.

In addition since we own the domain mycompany.com mycompany.org etc.. we would like to also prevent someone else from registering mycompany.co.uk or mycompany.eu (european community) do we actually have to file more paperwork for Europe & EC trademark (which means hiring some foreign attorney) or can we just continue the way we are.. and if we find a company in the UK/EC starting to use the same name.. we can use our current USA registrations as proof of "first use" with the Internet domain name register, to get the name taken off them.. or do we then have to file new trademark application in europe?
Trademarks are national in scope -- what that means is that a U.S. trademark may only be asserted against acitivites occuring in the U.S. Any trademark rights you have in the U.S. -- whether a registered mark through the USPTO, registered state mark, or common law marks -- are completely irrelevant in the international arena. Even if you did have a federally-registered mark through the USPTO, it would give you know authority to keep a foreign company from using the mark in a foreign country.

The only time a U.S. mark is useful in foreign countries is that a preexisting U.S. mark may be used to establish a "priority date" when you are applying for a foreign trademark under the Madrid Protocols. What this means is, usually your "priority date" is the date you file your Madrid application, and if two people file for the same mark, the one with the earlier priority date generally wins. A preexisting U.S. mark can, in some case, be used to establish an earlier priority date than the filing date -- the same is true for foreign markholders trying to get a U.S. mark under the Madrid rules as well.

But the U.S. mark, by itself, provides no protections and cannot be asserted against companys and goings-on happening wholly outside of the U.S.

Doesn't this whole thing come down not to "trademark registration" but rather "who can prove they were first using it in business" the logo is unique.. I don't think we will have an issue with that.. but the business name.. containing the word "athena" might be an issue.. I just don't want to spend $10k -$20k on this issue.. or hire foreign attorney's etc.
That's all true, to a point -- generally the first to use a trademark is the one who is credited with "owning" the trademark. But, unless the trademark is registered with the USPTO, a trademark is considered geographically limited to the area where the mark is actually being used. In your case, if you are using the trademark in WA, CA and DE, you would have the rights there, but potentially someone in OR could begin using the same mark, asnd as long as they didn't come into CA, WA or DE, there really isn't anything you could do about it. You could try and establish that your trademark is valid in a wider area, but that's pretty tough to do unless you can show advertising, sales, stores, etc., in the other areas.

On the other hand, a registered mark is national in scope -- by registering your mark with the USPTO, it automatically covers the entire U.S. So registration preempts anyone from using the same mark anywhere in the country.

But here is the tricky part -- even if you already hold a state mark or common law mark in WA, CA and DE, someone else could potentially federally register the mark anyway, giving THEM national scope over the trademark. Now, since you would be a preexisting user of the mark, the registered mark holder could not keep you from using your mark -- you've earned the right via use of the mark, and/or state registrations. But the registered mark holder can keep you from expanding the use of your mark outside of the existing geographical areas where you are currently using you mark. So, you are right that the first person (the "senior" markholder) to use the mark has some control, but only in the limited geographical area where he can establish trademark rights -- a second (or "junior") user of the mark may still be able to claim a federal registration and "lock out" the rest of the country.

That's the whole point of federal registration -- it gives you a lot more control over your mark. And that's why it's correspondingly more expensive and difficult to obtain a federally-registered mark, because it gives you so much more power over a state or common-law mark.

In any event, however, domain names are entirely separate from trademarks. It is potentially possible to obtain a domain name even if the name is a federally-registered mark, and there is no way a markholder can keep others from registering and using a domain name short of buying up all of the available domain names. If someone else buys up a domain name that contains your mark, and then cybersquats on the domain, you may be able to sieze it -- but there is no way a mark holder can "block" the registration of domain names by virtue of their status as a markholder.

And, like I noted before, in any event, a U.S. mark cannot be used to block or sieze foreign domain names, nor can a U.S. mark be infringed by someone operating entirely outside of the U.S.

I don't think we will have an issue with that.. but the business name.. containing the word "athena" might be an issue..
As a final note, this is the difference between a "standard character mark" and a "mark with design elements" or a "fanciful mark." A standard character mark trademarks a given word by itself -- perhaps "athena" in your case. If you were to obtain a standard character mark, you would potentially be able to broadly keep others from using the word "athena" by itself or in combination of other words. However, a mark with design elements is typically a word, like "athena," combined with a particular font, colors, pictures, etc. -- in other words, a logo. Marks with design elements generally are far less broad than standard character marks -- potentially someone else could use the word "athena," alone or in combination with other words, and as long as the use of the words and the desing elements were not "confusingly similar" to your logo, there would be no infringement. This is why it is pretty darn hard to get a standard character mark registered, because the protections are so broad -- usually only made-up words can get standard character mark protections.
 
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