Trademarks VS Domain Resellers

[veronicat]

Illinois, USA.

Four months ago, a domain reseller bought a domain name that i now want to use. I grabbed the .org and .net addresses, but they have the .com. As far as I can tell, no one has ever used this term for anything. These are my questions:

since they are only going to resell it:
Can I still trademark the name?

Can I trademark it in their area?

Is it illegal to trademark a name for the purpose of reselling?

Do they have the legal right to dispute the ownership of a trademarked name with me when all they wanted to do with it was to resell that name?

Would I have any rights, as a trademark owner, to battle with them over the ownership of the name, or to demand that they do not resell it?

A trademarking question that relates to my specific name:

If, for instance someone had trademarked the term "blow free" and what they wanted to use that term for was their snowblowers, would I be able to trademark "blowing free" for use with an adult website, I.O.W., would the "ing" on the end, or the alternate meaning of the word differentiate what I wanted to tm from the existing tms, or would they still own the term because the lettering was too similar?

Thanks a whole lot for your time. I tried to make my questions as short and sweet as possible.

 

[divgradcurl]

"Can I still trademark the name? "

You can apply for a trademark, and if the name is not trademarked by another, meets the requirements for being a trademark, and is used in commerce as a trademark, then yes.

"Can I trademark it in their area?"

If you receive a trademark registration from the US Patent and Trademark Office, then that trademark can be asserted nationwide -- but if someone else is already using the name and has established "local" or "common law" trademark rights in the name, you can't keep them from using it in their local area.

"Do they have the legal right to dispute the ownership of a trademarked name with me when all they wanted to do with it was to resell that name?"

Yes.

"Would I have any rights, as a trademark owner, to battle with them over the ownership of the name, or to demand that they do not resell it?"

Yes.

"If, for instance someone had trademarked the term "blow free" and what they wanted to use that term for was their snowblowers, would I be able to trademark "blowing free" for use with an adult website, I.O.W., would the "ing" on the end, or the alternate meaning of the word differentiate what I wanted to tm from the existing tms, or would they still own the term because the lettering was too similar?"

This would completely depend on the facts.

Getting a trademark is not a simple deal. If you want a registered trademark, you have to apply for it through the USPTO -- while it is certainly possible for one to do it themselves, the majority of trademark applications are done by an attorney, because it is not a simple procedure. Getting a trademark registered is much more akin to getting a patent issued than it is to getting a copyright registered.

Plus, even if a registration is approved, you have to show the USPTO that you are using the trademark in commerce before they will complete the registration.

If you don't want to go through the hassle of a registered trademark, you can sometimes get a state trademark -- but usually only for the state you are doing business in, and you would need to contact that state's chamber of commerce or secretary of state to find out what the application rules are. Plus, a state trademark only covers that one state, or a part of that one state, so it probably wouldn't be overly useful for an Internet company...

 

[veronicat]

trademarks

thanks for answering my questions. now i have a few more for anyone who doesnt mind answering:



if they registered the domain name 4 months before i registered mine, would they then legally be the owners of the trademark, or would they win if they filed suit, even if i filed first for the trademark?




you said:

"Do they have the legal right to dispute the ownership of a trademarked name with me when all they wanted to do with it was to resell that name?"

"Yes."

what about the anticybersquatter act? doesnt that take away some of the right for domain name resellers? Does the government allow you to buy trademarks specifically for the purpose of reselling them at a higher price? i really cant imagine that they would... I could have sworn that there was something in the trademark requirements that had to do with requiring a "legitimate reason, or legitimate business purpose to get the trademark" or something, although i have no idea how they define legit.




how much does it typically cost to get a national trademark? and how much for the lawyer?

how much does it typically cost to get a state trademark?

(i did try to look at the governments price chart for these, but i dont understand what all the possible fees are and which would apply to me... or what is necessary for a basic tm)

 

[divgradcurl]

"if they registered the domain name 4 months before i registered mine, would they then legally be the owners of the trademark, or would they win if they filed suit, even if i filed first for the trademark?"

No. Registration of a domain name does not give you a trademark. State and Registered Trademarks can only be obtained through application combined with use in commerce; common law trademarks can only be established by use in commerce. Merely registering a domain name is nowhere near sufficient to establish a common-law trademark, and 4 months is likely insufficient to establish a common law trademark even if the mark is being used in commerce.

Plus, the mark has to be something that is able to be trademarked anyway. Generic terms, place names, etc., can generally NOT be trademarked.

"what about the anticybersquatter act? doesnt that take away some of the right for domain name resellers?"

You asked about disputing a trademark, not a domain name. These things are NOT the same. The anticybersquatting act prohibits someone from registering a domain name in order to take advantage of a trademark holder -- if there is no trademark holder in existance when a domain name is registered, then the anticybersquatting rules, by definition, have no effect.

"does the government allow you to buy trademarks specifically for the purpose of reselling them at a higher price?"

Again, I think you are confusing trademarks and domain names. You can't "buy" a trademark -- you have to apply for a trademark with the USPTO, and then USE the trademark in commerce before you can establish a registered trademark.

Of course, the purchasing of domain names in order to extort money out of trademark holders is exactly what the anticybersquatting rules were designed to prevent. However, until you actually have a trademark, these questions are irrelevant.

"I could have sworn that there was something in the trademark requirements that had to do with requiring a "legitimate reason, or legitimate business purpose to get the trademark" or something, although i have no idea how they define legit."

The "legitimate reason" is engaging in commerce. You can't register a name and sit on it -- you have to use the mark in commerce, otherwise you lose the right to enforce the trademark.

"how much does it typically cost to get a national trademark? and how much for the lawyer?"

This will completely depend on how "trademarkable" your name is. The more generic your name is, the more difficult and costly it will be to get a registration. The more "fanciful" the name, and the more the name is unlike any other name out there, the easier and cheaper it will be. Certain types of names are not trademarkable at all, without some evidence of "secondary meaning" -- these are the most expensive and difficult to acquire.

"how much does it typically cost to get a state trademark?"

Depends on all of the factors above, plus what state you are in.

If you are serious about trying to acquire a trademark, you really should try and sit down with an attorney who is experienced in trademark prosecution in order tog et some idea of what it will take and what it will cost.

 

[veronicat]

just a bit more...

yes, domain names and trademarks are very different... and now i know more of the things that distinguish them from eachother. the main reason i was asking about trademarks was to see if there was some way to use a trademark to get a hold of a domain name that a reseller has bought.

so that clarified things a lot more thanks unforunately, my hyperactive mind has found some more questions... for anyone that would like to answer.

1 - Is there anything that I can do, legally, to get that domain name without having to pay the resellers an insane ammount? they are asking for five figures, and probably have only spent 10 dollars on the domain, and they are very obviously only buying domain names in order to resell them for outrageous prices. I get the jist that the anticybersquatters act gives consumers some way of doing this, although it doesnt appear that they have outlawed domain reselling outright, because only four months ago a domain reselling company bought the name i want... so, where would I turn them in, what would i tell them, or what would I have to do to get the domain?

2 - If not with the cybersquatters act, is there any way I can use a trademark to get the name?

3 - does anyone know of any other way to get the name legally without having to pay the resellers an outrageous fee?

4 - If i were to get into a trademark dispute with someone in the future, would evidence of my ownership of the specific domain name at a time before they trademarked it be enough to win me the trademark? Is it that the first person to register the trademark wins, or the first person to use it/think of it wins? Or am i completely oblivious to how this stuff works?

If it turns out that my questions this time dont even apply because i am completely oblivious abuot all this, then please feel free to hint in any direction that you think will be helpful to me.

 

[veronicat]

hmmmm the text of the anticybersquatter act seems to imply that it only protects "personal names" (like birth names.... i guess?)

but this page implies that offering to sell a domain name is illegal

"Responding to an offer to purchase the domain name. The covetous party, well aware of the ACPA language that offering to sell a domain name owner supposedly proves the domain name owner is breaking the law"

http://www.domainguru.com/article/194

i have no idea... i was really never any good with this legal jargon stuff, and never any good with the type of complex format that they use to write their legal papers.

ARE there any laws anywhere meant to protect consumers from domain name resellers?

 

[divgradcurl]

If you want, here is a relatively concise description of the anticybersquatting act:

http://gsulaw.gsu.edu/lawand/papers/su03/rockwell_stephanie/

"1 - Is there anything that I can do, legally, to get that domain name without having to pay the resellers an insane ammount? "

In a word, no, not at this time. Until YOU have a trademark, you have no greater right to the name than they do. Simply wanting to use the name gives you no rights to the name. You actually have to obtain a property interest -- that is, in this case, a trademark - in order to "exclude" another from using the name.

"If not with the cybersquatters act, is there any way I can use a trademark to get the name?"

If you are able to successfully obtain a registered trademark, and THEN if this person is only "sitting" on the name and not using it themselves in commerce. THEN you MAY be able to prevail under the anticybersquatting laws.

"3 - does anyone know of any other way to get the name legally without having to pay the resellers an outrageous fee?"

Wait until their registration expires, and hope they forget to renew, or decide not to renew...

"4 - If i were to get into a trademark dispute with someone in the future, would evidence of my ownership of the specific domain name at a time before they trademarked it be enough to win me the trademark? Is it that the first person to register the trademark wins, or the first person to use it/think of it wins? Or am i completely oblivious to how this stuff works?"

Again, owning or registering a domain name alone has nothing to do with obtaining a trademark. If the other person begins using the domain name in commerce prior to you obtaining a registered trademark, you may not be able to prevent them from using the name, and they may be able to get your registration overturned -- but they would have to be using the name in COMMERCE, not simply "squatting" on a name they have registered.

"ARE there any laws anywhere meant to protect consumers from domain name resellers?"

Not really. There are laws to protect people from resellers who abuse a registered trademark -- that is, try to profit from someone else's trademark. That's unfair competition, and there are laws against that.

But as far as domain names that are not covered by a trademark (or other IP rights), there is no "protection" -- it's just first come, first served. And that makes sense. Being able to keep someone else from obtaining a particular domain name is analogous to the right to "exclude" someone from a piece or real property -- you have the right to keep whomever you want out of your house, for example. But in order to obtain that right to exclude, you must first obtain a right to the property. In the case of a domain name, the way to obtain that right is to obtain a trademark...