trademark vs. my domain name

October 30, 2008 3:08 PM

I think a company is trying to do an end-around to get my domain name, what can I do about it?

I have a domain name that another company wants. They used to have a different name, but now they've registered the trademark.

A few years ago I started to get occasional emails from someone asking about one of my domain names. I always had plans (not so well fleshed out) and didn't want to let it go. I never entertained selling it, never mentioned money or any bad-faith things like that. I did some Googling and found out about the company with the slightly-different name (think "Bob's X" where now they're dropping the "Bob's") existing in another part of the country (USA).

Today I received an email from UPS about a package that was going to be delivered to the city I had found before, using an email address at this domain. I did a search at USPTO and found that they had received (I think) the trademark about six months ago.

The frustrating thing is that I had explored getting the trademark based on my plans, even talking to a lawyer, but not following through. I'll likely be talking to this lawyer later, but I want to probe the hive.

posted by rhizome to Law & Government (6 answers total)

What is the question, exactly?

What can you do about another company registering a trademark that coincides with a domain name you're not using? Not a damn thing.

It doesn't sound to me like they're even doing anything to try to get it from you. As mentioned above, if they were trying to force you into selling they'd go through the UDRP or maybe even the traditional court system. It's not going to start by them sending you emails about packages.

It's unclear what issue you're actually even trying to resolve. To me it sounds like everything's as it should be.
posted by toomuchpete at 5:32 PM on October 30, 2008

Response by poster: My intent for the domain name (and there is a blog up on it right now with just a few entries) absolutely coincides with their business. My "X" blog that Bob's X has expressed interest in is intended to be all about X, including (in my dreams) manufacturing and retailing X. Now, it's not "X" like "automobiles" or "furniture," it's more like "Bob's Cookster" is a BBQ Supply store, and me having cookster.com wanting to write about cooking supplies, perhaps creating my own cooking tools, and selling all of the above from the site.

A good friend of mine works at a large Patent and Trademark law office, so I'm waiting to hear back from one of his coworkers (who was going to help me with the trademark a couple of years ago). I guess my question forks into mattdidthat's comment above (personal anecdotes and pitfall avoidance) and timing issues that would likely be better dealt with by a trademark prosecutor (i.e. whether I could turn this around into getting the trademark).
posted by rhizome at 6:19 PM on October 30, 2008

I can't speak to the issues of whether you would have any case of getting their trademark or they would have any case of getting your domain, but I'd note that there isn't really much of a case in the situation described that they are after the domain at all. If you want X to be your brand identity, registering the trademark is frankly a more important move than possessing the most desirable X-dot domain. And if your company is called X but your domain is Xtypedeal.com, it wouldn't be a particularly surprising error for some drone to put an email @X.com on a UPS slip. Doesn't mean they're not after it, of course, there just doesn't seem to be any particular evidence that they are.
posted by nanojath at 9:32 PM on October 30, 2008

honestly, if the issue is important to you, you shouldn't wait for your buddy's co-worker to get back to you. Just hire an attorney and see what you can do.
posted by b_thinky at 2:26 AM on October 31, 2008

Response by poster: All good points. I'm just trying to arm myself with as many contingencies and questions to ask as possible. Sure, at the end of the day the lawyer will be able to lay down the law with me and tell me that in fact there are one, two or no options available to me and that it's just a matter of time.
posted by rhizome at 12:57 PM on October 31, 2008

Response by poster: Just a follow up, nothing has happened so far. I'm job-hunting right now, so once that happens I'll be paying for the lawyer to either contest the registration, register with a subset of claims (or whatever they're called, the categories), or something else. At the end of the day, the email I received has been the only thing so far and I haven't heard anything more since this question was posted, so I can't provide anything but my anecdote to future readers. If something happens before comments are locked here, I'll update.
posted by rhizome at 2:07 PM on December 8, 2008