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Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

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Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#251

Post by adventured »

paxys wrote: post #228

Disclaimer: I'm not a lawyer and this isn't legal advice. Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html . You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter. Look…

OP should consult a lawyer with domain expertise and should seek to invalidate the threatening company's trademark, rather than doing nothing. File a petition to cancel the trademark with the Trademark Trial and Appeal Board.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#253

Post by havocsupreme »

jonp888 wrote: post #99
harryvederci wrote: post #33

General remarks for these types of posts: - People often mention 0 countries. Where do you operate? Where was your company founded? How about the other company? Etc. How do you know if that helpful comment doens't assume something totally different? - Are you really going to feel confident about your legal situation after reading comments on a platform like Hacker News?

When someone didn't feel the need to mention which country they are talking about, that's usually because they're American.

It's mentioned in their comment history that they're Australian.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#255

Post by [deleted] »

donmcronald wrote: post #212
bhartzer wrote: post #115

You need to speak with a qualified domain name attorney, not just any attorney or solicitor. As Director of a domain name protection company (and not an attorney) I can offer this: If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes dow…

> If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered. I've never heard of that before and all I can find trying to search are sites about the `.insurance` TLD. Anyone got any links to some examples?

[deleted]

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#256

Post by pbhjpbhj »

chrischen wrote: post #234
paxys wrote: post #228

Disclaimer: I'm not a lawyer and this isn't legal advice. Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html . You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter. Look…

Since the OP is running a legitimate business on it I wouldn’t recommend them sitting on the trademark being owned by a competitor, even though I agree with you it sounds like the other party has no legal basis to do anything to them, even if they own the trademark. I am not a lawyer but this exact same thing happened to me and I did consult a lawyer.

>I wouldn’t recommend them sitting on the trademark being owned by a competitor //

This is not legal advice and in no way relates to my employment:

Trademarks don't work like that. Prior use for trade is an absolute defence in most jurisdictions (though I'm not intimately familiar with USA) and is most likely a reason to invalidate the latecomer's trade mark. You're definitely not "sitting on [their] trademark" if you were using it for trade before them. If anything they're infringing your trade mark -- though that's unlikely to do anything unless there's 'passing off'.

Trademarks are usually limited by geography and by Nice class (famously Apple computers promised Apple Music not to do anything in the way of music business so as not to infringe Apple Music's earlier mark) so several businesses can use the same word as a trade/service mark as long as they're not likely to be confused.

The opposition period may well have expired for invalidation, I don't know how that works in USA.

Them badgering you, and a trademark attorney misrepresenting the situation could be reason for a countersuit by itself. Certainly I'd discuss that if they do enlist some representation.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#257

Post by Someone »

bhartzer wrote: post #115

You need to speak with a qualified domain name attorney, not just any attorney or solicitor. As Director of a domain name protection company (and not an attorney) I can offer this: If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes dow…

> If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.

I would think it’s too late for that. Insurers typically (and most of the time rightfully, exceptions being cases were law requires them to do so, as is the case with health insurance in some countries) do not cover cases known before the insurance started.

If they covered past issues, nobody would take insurance before they knew they needed it.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#258

Post by DonHopkins »

musesum wrote: post #32

I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before they registered the trademark. I looked up the ICANN rules and saw I had priority. Pointed out the ICANN rule and told to go away. They did. IANAL; this is not legal advice.

Milk.com FAQ:

Occasionally, our adoring public has a salient question. Here are the most frequently asked, along with clear, concise answers. Please only send mail if your question has not already been answered on this page.

http://milk.com/faq/

http://milk.com/value/

History of bud.com:

https://bud.com/history-of-bud-com/

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#259

Post by DonHopkins »

aasasd wrote: post #247
masklinn wrote: post #50

Earlier quoted context omitted.

Also IANAL but these demands make even less sense due to trademarks being categorised in classes , that you own Douche® registered in rubber products doesn't mean someone else can't have Douche® furnitures, and both have a reasonable and compatible claim to the name (for instance there are at least 5 different companies or organisations called "Apple" with presence in the US). Furthermore, the USPTO allows multiple t…

> Douche® furnitures Somehow that does have the cadence and sound of a ‘premium’ brand, or at least faux-premium. The ‘registered’ symbol really sells it, though. In these post-ironic times, I can easily see this name being used.

Rhymes with Touché.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#260

Post by chrischen »

pbhjpbhj wrote: post #256
chrischen wrote: post #234

Earlier quoted context omitted.

Since the OP is running a legitimate business on it I wouldn’t recommend them sitting on the trademark being owned by a competitor, even though I agree with you it sounds like the other party has no legal basis to do anything to them, even if they own the trademark. I am not a lawyer but this exact same thing happened to me and I did consult a lawyer.

>I wouldn’t recommend them sitting on the trademark being owned by a competitor // This is not legal advice and in no way relates to my employment : Trademarks don't work like that. Prior use for trade is an absolute defence in most jurisdictions (though I'm not intimately familiar with USA) and is most likely a reason to invalidate the latecomer's trade mark. You're definitely not "sitting on [their] trademark" if y…

> Trademarks don't work like that. Prior use for trade is an absolute defence in most jurisdictions (though I'm not intimately familiar with USA) and is most likely a reason to invalidate the latecomer's trade mark.

I didn't say the OP doesn't have a case against the invalidation of the trademark. I'm saying that if they choose to do nothing it may erode their case for invalidating the trademark in the future, or at best their competitor will be able to keep using the infringing mark. It's why trademarks get viciously defended by companies like Facebook, even in seemingly minor infractions.

" If you don't take steps to prevent others from using your marks, you could lose your trademark rights." https://www.legalzoom.com/articles/what-are-common-law-trade...

> Them badgering you, and a trademark attorney misrepresenting the situation could be reason for a countersuit by itself. Certainly I'd discuss that if they do enlist some representation.

Anything to do with suing will cost in the upper tens of thousands to hundreds of thousands of US dollars. A cancellation is easily done and relatively cheap though.

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