Recently in domain names Category

June 4, 2009

Blog Name 'Stolen' By Website

iStock_000009162655XSmall.jpgDear Rich: I registered a blog on Blogger in January, 2009, and at the bottom of the blog was a trademark notice as well as a copyright notice repeating the blog's name and stating "all rights reserved". The blog links to our website, which sells coastal- and beach-themed decor and similar items. It was our intent to make the blog a website of its own. Our first posting was on February 14, 2009. I recently learned a company registered the exact title of my blog with a dot.com extension on February 9, 2009 and it states "beach-inspired decor, lounging, and accessories" The site did not exist at the time I registered the blog or did a trademark search on TESS. Their site has no mention of a trademark or any copyrights. Since I claimed trademark for the name as well as copyright notice on my blog, I am wondering if I can send a cease and desist letter. I'm so glad you asked. The short answer is "maybe you should send a letter... or maybe not." We're sorry to hear about the misadventures of the competing website. However, the Dear Rich staff must point out that adding a trademark notice -- for example, the letters 'TM' -- doesn't mean much except that you think you have trademark rights (unlike a federally registered mark, which entitles you to use the 'R' in a circle). Starting a blog at a blogging website like Blogger also does not guarantee you rights; it merely reflects that you started a blog. (Note also that the date of the postings can be changed in blog software, so that fact by itself is not conclusive as to rights.)  

What really matters?
You may have a superior legal position if you can demonstrate that you are the first user of the mark in connection with the sale of these goods (or with retail web services). You will probably have a harder time winning that battle if your mark describes some aspect or quality of the goods. In general, the most important date is the date when trade (the sale of beach products) was first conducted using the blog name or mark. (As they say in the IP biz, "no trade; no mark.") If you feel you have acquired trademark rights (or if you have a bona fide intent to use the mark) you can file with the USPTO and proceed against the other site on the basis of your federal rights. But please review your situation before filing, as the USPTO fees are not refundable. For more help, you can find Nolo's downloadable Guide to Trademark Applications on this web page
May 5, 2009

Trademarks and Domains: The Beat Goes On

yesterday.jpgDear Rich: A company has a trademark for my domain name that was registered two years ago. I plan on using my domain as the name of my company with the intent of selling a product of an entirely different nature. I am really surprised they did not register it earlier. What do you think? The Dear Rich staff thinks you should look at yesterday's blog.
January 15, 2009

Stopping Blogspot Subdomains

com.jpgDear Rich: I have a question. My business partner and I have acquired trademark registration for the name of our business. We bought the domain name (.com), as well as about nine different extensions (.net, .org, etc.), and plural versions in nine extensions as well. We also have registered copyright protection on the name. I was going to use the name for a blog at the Blogspot domain -- but it is already taken. (The person who had it is no longer using it and has started a different blog.) Do we have any legal rights to the name when it is used as part of the domain name at Blogspot. If so, can we ask a confusingly similar website/blog to cease and desist? I'm so glad you asked. The short answer to your questions is, "Probably."

In your case, you registered in two classes and one of them included "On-line journals, namely, blogs featuring self-help, personal growth, and gratitude." So, you'll have a good basis to stop a blog that offers information or commentary under a confusingly similar name. That is, if you went to court, you would have a good chance of prevailing.

However, you will have difficulty asserting your rights against the blogger under international cybersquatting rules, even if the blogger acted in bad faith, since all Blogspot.com blogs are subdomains. In other words, bloggers at Blogspot.com don't "own" domains; they've acquired limited rights to post under Blogger's (that's the company that runs the service) terms of service. However, if the blog's name is misleading or confusing people as to its source, you may be able to appeal to Blogger (owned by Google, Inc., btw) based on a violation of its blog content rules. Write to them and explain the situation; they may be able to help you out.

The Dear Rich staff admires your diligence in acquiring all these forms of protection, but the staff is confused about your statement that you have acquired copyright protection in the name, since copyright does not extend to names

September 1, 2008

Does my domain name infringe your trademark?

gambling.jpgDear Rich: I have a question. I own a domain name -- let's just call it gamingaus.com. I found out that someone has registered the trademark gamingaustralia.com. Would I be infringing their trademark? I'm so glad you asked. The short answer is "probably" (based on the assumption you are both offering gambling services and the fact that the names are fairly similar.)

The billable answer is that many variables arise when choosing a domain name similar to an existing trademark. For example, you may be able to use your domain name if you can show that consumers aren't likely to be confused by the two names, or that you are the first (or "senior") user, or that you are not offering the same services. Say, for example, the other company offers gambling services and you offer "gaming" services (in which you assist in the removal of some species of Australian vegetation). Or, perhaps your site helps people with "gaming" the Medicaid system. If those arguments fail, there's always the possibility that you could challenge the trademark registration on the basis that it is "merely descriptive" (or the generic term) for what the service offers.

The fact is that even unrelated services -- say, wildlife preservation vs. pro wrestling -- can trigger problems. You'll also get hassled if you acquired the domain name primarily to profit by selling it to the other company. The Dear Rich staff would recommend you err on the side of caution, since gambling enterprises are usually well-funded and unafraid to litigate -- or, as our staffers put it: "the bigger the headache, the bigger the pill."

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."