Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.
Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
21–30 of 293 posts
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#22Check this out:
https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1...
Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."
If you can demonstrate that you were the first to use the trademark, you have less to worry about (but nothing's guaranteed until litigated).
HOWEVER, if the party that registered the trademark can demonstrate that they used it prior to you, regardless of when they registered it, then they may have the upper hand.
This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond.
They may, in fact, recommend that you countersue for infringement. Might not be worth your time to pursue, but at least in theory you could claim that they're infringing on your trademark, because the U.S. follows a "first to use" rather than a "first to file" trademark system.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#23I’d talk to a lawyer about drafting a counter letter saying you were unaware of them using your brand and that they need to do all those things back to you since you have been using the name longer. Also petition the trademark office to invalidate their claim due to your prior use.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#24Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.
> and I'm speaking as an actual licensed attorney.
and so the racket continues
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#25I thought that was the point of trademarks, being able to control their use. Please post your experiences after you've had legal advice since I'd have assumed you wouldn't have a leg to stand on.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#26This has happened to me several times, I have never taken it seriously or put much effort into responding.
I usually would go straight to the throat and very personal.
Publish their letter on the domain they seek, capture all lawyer and company details and publish to site.
Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.
They are trying to bleed you with superior resources so guerrilla tactics are best ( legal of course)
They act different when they realize they are exposed and you don't care about normal processes.
Lol, I should make my own David v Goliath service.
Depends on the size of Goliath. No one scary came for me and a few 2am calls led to crickets.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#27Genuinely curious, isn’t there merit (I guess in terms of law?) for OP to do the same to the .net company?
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#28Can you share who they are? Not naming them only helps in letting them hide their crime in darkness.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#29While this is definitely a bunch a hot air, unfortunately they could frivolous sue you to simply win on financial grounds alone (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs). I'd evaluate what your endgame is. If your en…
> (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs)
"This past June, the U.S. Supreme Court ruled that plaintiffs cannot sue companies in a state where they may do business, but do not have significant connections to that state."
Bristol-Myers Squibb Co. v. Superior Court of California (BMS)
https://www.andruswagstaff.com/blog/supreme-court-rules-plai...
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#30Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.
> and I'm speaking as an actual licensed attorney. and so the racket continues
Exactly. Licensed attorney's typically avoid any commentary at all that could be construed as advice, to avoid creating a relationship. So if someone is sticking their neck out, it is hard to imagine there isn't an ulterior motive in telling everyone to lawyer up when they get a letter.
Not that their advice is wrong - you should consult a lawyer over internet advice. But the "everyone else is wrong, listen to me" flavor is a bit heavy-handed.