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International trademark v domain

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Natjc

Junior Member
hi im new here and im in need of any advice regarding my issue to help me proceed further.

In 2017 i set up a domain and built a website ( xyz.co.uk) its been active since.
i am a ltd company ( set up 2018) and im currently looking to trademark our mark.

The issue i have stumbled upon...
Is the domain ( xyz).com is registered and has been since mid 2015. its the exact name as ours and the xyz is what i was looking to trademark
the other issue i am facing so far..
the xyz.com site is in use and similar to ours in terms of service offered. they claim to be two entities one being a LLC d.b.a xyz. ( so they claim to be a LLC and doing business as the name we also use).

However there is no trace of them being a registered company or any sign of them at all as they claim or even any trademark registration, their privacy page states Michigan for jurisdiction etc yet no details of either of their entities in any usa search.

Im aware if i get accepted for our trademark then in terms of xyz.com i understand they registered it before us but where do we stand if at all if we get the trademark.

does common law still apply if they are not a legit business paying taxes or even a legit registered business?

Thank you
 


FlyingRon

Senior Member
We only handle US law here. Try www.thelawforum.co.uk.

Domain names are distinct from trademarks. There's a lot of collision in domain space because it is smaller than collision space. Having a domain itself doesn't confer trademark status, trademarks come from being used in commerce (at least in the US). As for rights to use the domain, that is even more involved. I suggest you seek legal advice in your country.

I'm not even sure what you are asking. You don't get "approval" for a domain. A person can register a domain that is not already registered. If a company thinks somenoe has done this in bad faith, with some money, they can go to arbitration to try to reverse that registration. Understand it takes more than your cursory look to see if they have a trademark or company to determine bad faith.
 
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Natjc

Junior Member
I’m unsure where else I look I have checked all Usa trademark an llc databases but no avail the xzy.com isn’t so far registered as anything. Maybe a sole trader but they claim to be llc .

I’m aware they registered that .com domain before we registered .co.uk but I wasn’t sure where we should with wanting to go international when we are above board and the other is merely earning money from a website but isn’t registered as a business or trademarked as they claim

Thanks
 

FlyingRon

Senior Member
There is no such thing as a US trademark database. There is a database of trademark REGISTRATIONS. That isn't the same thing.
There's also no such database of all US LLCs. LLCs are handled by the individual states. Do not confuse the federal sites for things like PUBLIC companies for a list of all companies.

Nothing is preventing you from conducting your business just because someone has a similar domain name. If they are using that name to create a confusion with your business, then you might have a trademark suit, but that appears to not be happening. Again, since you came along later, I'm not seeing how even if they were squatting on this domain, that it's a bad faith issue that is going to allow you to prevail in a UDRP arbitration (which will cost you thousands win or lose). Of course, UDRP is so screwed up anything is possible.
 

quincy

Senior Member
hi im new here and im in need of any advice regarding my issue to help me proceed further.

In 2017 i set up a domain and built a website ( xyz.co.uk) its been active since.
i am a ltd company ( set up 2018) and im currently looking to trademark our mark.

The issue i have stumbled upon...
Is the domain ( xyz).com is registered and has been since mid 2015. its the exact name as ours and the xyz is what i was looking to trademark
the other issue i am facing so far..
the xyz.com site is in use and similar to ours in terms of service offered. they claim to be two entities one being a LLC d.b.a xyz. ( so they claim to be a LLC and doing business as the name we also use).

However there is no trace of them being a registered company or any sign of them at all as they claim or even any trademark registration, their privacy page states Michigan for jurisdiction etc yet no details of either of their entities in any usa search.

Im aware if i get accepted for our trademark then in terms of xyz.com i understand they registered it before us but where do we stand if at all if we get the trademark.

does common law still apply if they are not a legit business paying taxes or even a legit registered business?

Thank you
You can register your trademark in the U.K. even if there is a business in the US that has registered their business name with their state's Secretary of State. Registration of a business with a state is separate from registration of a trademark.

In the US, federal registration of a trademark is not necessary for the user of the mark to have trademark rights. The rights come from the use of the trademark in commerce, with the first user of a mark the presumed owner.

In the UK, the first to register a trademark will be the presumed owner of the mark. In the U.K. and many other countries it is not first to use but first to register.

Domain names are unique addresses on the internet. Each domain name is therefore necessarily different. These domain names do not on their own function as trademarks. They are web addresses. It is only when a domain name legally conflicts with an existing trademark and this conflict causes consumer confusion that a domain name registrant may have to give up their domain name to the trademark holder.

For example, there are several businesses in the US that use "executive" as a trademark. Only one of the "executives" can have executive.com as a domain name. The business that was first to register the domain name executive.com owns that web address. Unless or until that domain name infringes on another's trademark rights/confuses consumers as to the origin of goods/services being offered at that site, the other executives must be content with other domain names.

You can sit down with an IP attorney in your area to see if your preferred trademark is at risk of infringing on the rights of a possible trademark holder in the US. Based strictly on what you have said, it seems unlikely - but real names and all facts must be personally reviewed to determine this better.

Good luck.
 

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