I'm in a Pickle

[EP73]

I have a web domain that I've owned and not used for about 8 years. It's a very catchy .com name. I'm about to start using it, yet before so I'd like to iron out getting it trademarked. The name itself, without the ".com", has never been registered for trademark.

I recently discovered a problem; someone is using the name for an App. Their App is also similar to a part of my web site idea, yet my ideas go much further. If the site were a success after a few years I'd also like to incorporate an App. Obviously I'd like it to reflect the name. This is where the pickle is. I won't give the name out, but I can say that the name is self-descriptive.

If I register (Trademark) the name who gets control over the App at that point? Since I've had this .com name for such a long time (and yes I can prove it) and well before Apps were around does that account for anything as far as the courts are concerned? What control do I have after I register the name? Would I request that they surrender the use of the name for an App?

Don't mean to be ruthless, but I can see that this may get hairy.

Thanks for any help.
EP

 

[justalayman]

If I register (Trademark) the name who gets control over the App at that point?

the app is always controlled by its owner. If you mean the name, that would remain in the hands of the party that has been using it in commerce; the other guy




Trademark rights are created by using the trademark in commerce, not by registering them.

In fact, since they already have established their rights, they can contest your use of it at all, even including your site regardless of the .com, .net., .anything.

chances are if they want your domain, they can take it as it appears you are squatting on it and ICANN tends to not like that to happen. Since they have rights to the TM, they would likely prevail in an attempt to take the domain name.

Don't mean to be ruthless, but I can see that this may get hairy.

but you would be on the losing end from your set of facts.

 

[EP73]

Thanks for the reply.

I looked more into their App, this evening, and I was actually mistaken since I looked at it last, about a year ago. Last time I looked at it I did not read into it enough. We do have two different ideas entirely. At the time I was looking at other similar sites and don't ask, but I mixed it all up in my brain I guess.

Does that change anything?

With this, would it make sense for me to go forward filing for the trademark?

Is there anything I can do to turn this around? Say by making the site active and using it for what I had intended? Outside of ICANN would that satisfy other parties, especially trademark rules?

Would I make the site active and then trademark or the other way around?

EP

 

[justalayman]

EP73;3060350]

Does that change anything?

Not in regards to what you asked. The TM is not based on what it is used for but more simply, that it is used. Where the difference in actions of the app would be more related to copyright issues than trademark law. There could be parts of an app that can become a TM but in itself, copyright issues are the controlling law in the actual app.


read Wikipedia's page on the matter. It actually explains the situation pretty well. http://en.wikipedia.org/wiki/United_States_trademark_law

 

[EP73]

Thanks, that was an interesting read, but not sure if I get it completely.

What if I didn't make an App and just stuck to the web site? Would it matter? I have a feeling, it doesn't. A name is a name.

BTW, the site would not make any money until advertisers came along.

If I did make an App couldn't I just add a sub-name so-to-speak? Like say, instead of just "App" it was "App Bread"? I've seen this used quite a bit for numerous Apps and they may or may not be similar.

Is there any law or way that I can fix this?

Is this site name worth anything at this point?

Thanks again.

 

[justalayman]

EP73;3060401]
What if I didn't make an App and just stuck to the web site? Would it matter? I have a feeling, it doesn't. A name is a name.

but a name not actually used in commerce has earned no trademark rights. If the website actually is an active site, then there is use in commerce but realize the other party has prior use of the name. While a similar name (Think: Apple records and Apple computers) is not an infringing use, if the product or service is the same or similar, it could be considered infringement. Think: confusion. If there could be confusion between your site and their use, that is where the problem arises.

BTW, the site would not make any money until advertisers came along.

making money is not a requirement. Commerce is not defined as profiting from the business.

If I did make an App couldn't I just add a sub-name so-to-speak? Like say, instead of just "App" it was "App Bread"? I've seen this used quite a bit for numerous Apps and they may or may not be similar.

maybe but the problem with Tm infringement is that it requires a court to determine if it is infringement. TM infringement suits are generally not cheap so, if the other party has money and you have none, they basically can force you to comply with their demands or cause you to incur some pretty hefty legal fees simply defending yourself.

Is there any law or way that I can fix this?

without specifics there is no way to know but even with specifics. This is something you need to set down with a lawyer that practices in this area and let him review the specifics and advise.

Is this site name worth anything at this point?

nothing is worth anything unless somebody is willing to pay for it. Your site might be a viable sight. Not enough specifics to know. Other than that, it may be worth something to the other guys but be cautious with that. Due to the cyber squatting rules imposed by ICANN, selling site names can be a dicey proposition.

 

[EP73]

Thanks that really helps a lot.

In another thread you said: "also realize that if an entity fails to defend their rights, after some time they lose the right to attempt to defend them."

How long is that time? How can I use that in my defense if at all?

I understand your cautions completely. There product is not similar to mine, but it would be nice if I could approach them with my ideas for the App and we both reap the benefits. I'm just not that savvy. BTW, they appear to have the cash to squash me.

The biggest bummer is that I've discussed the ideas about this site with a few close friends and see the potential on how big it can really be. I'm now disabled and desperately looking for a way to bring in some badly needed cash. There must be a way to make this work.

 

[justalayman]

EP73;3060408]
In another thread you said: "also realize that if an entity fails to defend their rights, after some time they lose the right to attempt to defend them."

How long is that time? How can I use that in my defense if at all?

Not positive but I believe I read it is 5 years. Yes, you can use that as a defense if they attempt to dispute your use of the mark at least 5 years after you start using it in commerce AND in a way that they would have a reasonable ability to have seen it. In other words, if I use a mark in Nowhere, Kintucky and it is not used outside of our 12 person town, the other entity would not have been reasonably expected to know of the use.

There product is not similar to mine,

that may be your way to a win.Again, without specifics, it is difficult to really even guess though (and not asking for specifics. Not only shouldn't you disclose information that you do not want made public but it really isn't realistic to attempt to thoroughly discuss such topics on an internet forum.

BTW, they appear to have the cash to squash me

.I really hate that our legal system is so dependent on that fact but it is what it is

The biggest bummer is that I've discussed the ideas about this site with a few close friends and see the potential on how big it can really be. I'm now disabled and desperately looking for a way to bring in some badly needed cash. There must be a way to make this work.

I would strongly suggest speaking with an attorney that can review the actual facts and advise. You seem to be very confident in your ideas being valuable but simply need a way to avoid being squashed. Let a lawyer skilled in this area help you out. If nothing else, he might be able to find a way to mediate a deal between you and the other party.

 

[EP73]

Would I still attempt to register the TM now?

I will talk with an attorney asap, but just curious.

 

[justalayman]

you remember the section about ITU applications in the "obtaining a trademark" section of the wiki page?? As long as you intend on using it within the time period the USPTO determines to be proper, then you could. If you aren't, then it would do no good to attempt to register it until you are.

 

[EP73]

I'll use it immediately, even if I have to sell rotten tomatoes on it. Now that I see what I've not done in all these years I need to get on it.

One last note, they obviously know of my owning this domain. The App that they have does a referral site with the name in it along with a sub-name as I mentioned above. I just saw this. I wonder why they didn't contact me earlier.?

EP

 

[justalayman]

I'll use it immediately, even if I have to sell rotten tomatoes on it. Now that I see what I've not done in all these years I need to get on it.

One last note, they obviously know of my owning this domain. The App that they have does a referral site with the name in it along with a sub-name as I mentioned above. I just saw this. I wonder why they didn't contact me earlier.?

EP

maybe because you were not competing with them and they didn't really care about the domain name.

 

[EP73]

Could be.

Thanks for all your advice and comments, much appreciated.

EP