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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

#41

Post by jeremyjh »

nprateem wrote: post #31
jawns wrote: post #22

Check 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…

I'd love to know what that means in plain English especially since the trademark has already been granted.

Acquiring a trademark just sets a floor for when you acquired the trademark, it doesn't mean someone else hasn't already acquired it - that is a question that courts have to settle.

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

#42

Post by prepend »

otterley wrote: post #21

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.

I don’t question your motives in this instance, but I always pay extra attention when someone’s advice is to hire them or someone like them.

Obviously, “hire a lawyer,” is sometimes right. But if I hired a lawyer every time I was told to, I would be out hundreds of hours of billing fees. Anecdotally, I’ve never fucked anything up royally. That doesn’t mean that I made the right decision, but is something I strive for.

Spending $300-1000 on a consult every time I might need one is like taking an antibiotic every time I might have encountered a bacteria. It’s important to qualify and spend money when I actually need to rather than every time.

It’s like those people who say “don’t criticize my book until you read it” (since that usually means that it makes them some money to have me buy their book). If I had to read every book to figure out if I should like it or not, that’s impossible. I need to develop effective evaluations and filters to prevent me from wasting my time and money.

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

#44

Post by dylan604 »

codingdave wrote: post #4

Opening a dialogue about this would have been the professional approach. Blasting you with a long list of demands means they are trying to bully you. Cease and desist letters are just a way of trying to scare you into doing what they want so they don't need to do things the hard way. I'd recommend asking a lawyer if they have a case to make against you, just to be safe. But if they don't, this letter means nothing.

And their 3 day demand is total horseshit of a play as well. You have done the research, and feel they do not have in-house representation. It is done on a Friday, so 2 of the 3 days is weekend. Finding a lawyer in 3 days is not simple, and doing it with 2 of the 3 being a weekend when a lawyer is impossible to find is just bullying 101.

Fuck people like this. I feel bad for the Op, but sadly, I am jaded by the BS games that bullies play and win. I wish karma 1000x upon people that do this kind of bullshit.

We've all seen how part of the responsibilities of a brand is to protect it, but as someone else posted, there are ways of not being an asshole when protecting one's brand. Ultimate face saving for the company in question would be to realize what is ocurring and fire the legal team they have hired for this role, apologize for their behavior to the Op, and then amicially work out a resolution. However, I realize that this is such a low chance of ever happening to be laughable.

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

#45

Post by matthewfcarlson »

theartfuldodger wrote: post #26

This 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 resou…

Sounds absolutely ruthless and I quite like it. Don't think I'm bold enough to do it myself but I'm always surprised how much being persistent gets you when you're talking to companies.

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

#46

Post by harryvederci »

otterley wrote: post #21

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.

You can add a layer in between: there are countries with a governmental institution[0] where you can go to for basic legal advice. They may point you to an attorney if needed, but for basic things they can give you advice themselves.

[0] Dutch example: "Het Juridisch Loket"

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

#47

Post by [deleted] »

theartfuldodger wrote: post #26

This 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 resou…

[deleted]

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

#48

Post by otterley »

prepend wrote: post #42
otterley wrote: post #21

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.

I don’t question your motives in this instance, but I always pay extra attention when someone’s advice is to hire them or someone like them. Obviously, “hire a lawyer,” is sometimes right. But if I hired a lawyer every time I was told to, I would be out hundreds of hours of billing fees. Anecdotally, I’ve never fucked anything up royally. That doesn’t mean that I made the right decision, but is something I strive for…

I have no skin in this game. I just have experience.

The outcome here could be that OP loses their domain name. If they just want to give it up, they don't have to hire an attorney. Easy answer.

But if they do want to keep the domain name, when paid opposing counsel comes knocking at the door, they need to lawyer up, plain and simple.

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

#49

Post by user3939382 »

prepend wrote: post #42
otterley wrote: post #21

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.

I don’t question your motives in this instance, but I always pay extra attention when someone’s advice is to hire them or someone like them. Obviously, “hire a lawyer,” is sometimes right. But if I hired a lawyer every time I was told to, I would be out hundreds of hours of billing fees. Anecdotally, I’ve never fucked anything up royally. That doesn’t mean that I made the right decision, but is something I strive for…

> Spending $300-1000 on a consult every time I might need one

Actually I’ve been surprised to find that many times even high priced attorneys are usually willing to spend 20-30 minutes+ giving you some general advice before even retaining them. I’ve gotten very valuable advice this way several times at no cost.

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

#50

Post by masklinn »

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.

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 trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive).

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