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  1. #1
    SitePoint Wizard Another Designer's Avatar
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    Someone is using my trademark!

    I own a trademark and several variations of it via domain names.
    Now I see that someone is building a website using the trademark I own.
    Can I do anthing about this?
    Thanks

  2. #2
    ~unplugged Ainslie X11's Avatar
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    You can if it's a registered trademark


    working hard is hard work

  3. #3
    SitePoint Wizard Another Designer's Avatar
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    Yes it is a registered trademark.
    Is this going to be a big hassle? I hope not.

  4. #4
    ~unplugged Ainslie X11's Avatar
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    If it's registered with USPTO then you need to contact your patent and trademark attorney. They will send a letter to the person using your trademark advising them that they are not allowed to use it.


    working hard is hard work

  5. #5
    SitePoint Wizard Another Designer's Avatar
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    Thanks.
    This attorney is in anther state, believe it or not. I hope he doesn't charge me.
    How about a lawyer friend I have?

  6. #6
    ~unplugged Ainslie X11's Avatar
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    If your friend is up to speed with federal trademark law, and want's to do the job - otherwise, just use a local tm attorney - it's only a letter and will hopefully solve the problem for you without any further 'costly' actions.


    working hard is hard work

  7. #7
    SitePoint Wizard Another Designer's Avatar
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    Thanks.
    I was thinking about contacting the person myself, but thought better.
    I did email the person just asking if they owned the website.
    I guess a kind phone call might not be so wise, right?

  8. #8
    SitePoint Wizard Another Designer's Avatar
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    The trademark is registered in the plural. The lawer told me to do it that way. He said the plural will cover the singular use of the word too. This person has the website in the singular.

  9. #9
    SitePoint Guru El Camino's Avatar
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    Is the 'infringer' using the trademark in the same Goods and Services category that your's is registered under?

  10. #10
    SitePoint Wizard Another Designer's Avatar
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    The person's website is still under construction, so i don't know yet.

  11. #11
    SitePoint Member designcodes's Avatar
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    Quote Originally Posted by Another Designer
    Thanks.
    I was thinking about contacting the person myself, but thought better.
    I did email the person just asking if they owned the website.
    I guess a kind phone call might not be so wise, right?
    Yes phone call might not be so safe, but you can tell him that you own it and you can also take action against infringer, this might save you from a legal action.

  12. #12
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    Maybe the person building his website simply doesn't know of your trademark. Sometimes people are just clueless. I think a simple email saying "Hey, are you aware that <blah blah> is a registered trademark by me? I would appreciate you not using it."

    Only if he refuses, you should actually spend money on a lawyer.

  13. #13
    Floridiot joebert's Avatar
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    Quote Originally Posted by Edman
    Maybe the person building his website simply doesn't know of your trademark. Sometimes people are just clueless. I think a simple email saying "Hey, are you aware that <blah blah> is a registered trademark by me? I would appreciate you not using it."

    Only if he refuses, you should actually spend money on a lawyer.
    I agree with Edman.

  14. #14
    SitePoint Guru momos's Avatar
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    What does it cost to register a trademark?

  15. #15
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    I agree as well. Most people are clueless before they're evil. Let him know, ask him to stop, then take action if you need to.

    You also need to decide how important it is to you. If the odds are that him using it will have no negative impact on you in reality, I'd maybe just let it slide until it becomes an issue. Lawyers are $$$.

  16. #16
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    Hi,

    I agree with other that you should first contact this guy and POLITELY tell him that you own a tradmeark on the name/website he is buliding. Only if that doesn't work try other things.

    If that doesn't work you should contact his hosting company and ask for the website to be removed.

    Tell me something, does he have your trademark in his DOMAIN NAME? If yes and nothing else works you should file a domain dispute at WIPO (World Intellectual Property Organization). This is a much quciker (about 3 months) and cheaper (about $2000) process than filing a law suite. You need to proove 3 things in order for the complaint to succeed (respondent = him, Complainant = you):

    (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
    (ii) the respondent has no rights or legitimate interests in respect of the domain name; and

    (iii) the domain name has been registered and is being used in bad faith.

    If you suceed they can take the domain from him and transfer it to you. More info: http://arbiter.wipo.int/domains

    Regards



  17. #17
    SitePoint Wizard HarryR's Avatar
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    Hi,
    I don't mean to be a thread hijacker, but is there any difference between the process in the US as you've described and the process I would have to undertake in the UK to do a similar thing (e.g. colegsirgar.ac.uk is ours, colegsirgar.com is a dating company clearly using the domain in bad faith).

    Cheers,
    - Harry

  18. #18
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    Another designer, if the person has registered your trademark in a domain name using .biz, .com, .info, .name, .net, or .org then I would remind him of the ICANN Uniform Domain Name Dispute Resolution Policy (http://www.icann.org/udrp/udrp.htm) of which he will have agreed to when purchasing his domain name.

    For your info and to give you an idea of how this works, I had a friend who had registered a name with the Disney trademark, even though I warned him against using the name he would not listen and has since had his domain name transferred from him after Disney pursued the case with the National Arbitration Forum (http://www.arb-forum.com). My friend didn't respond to Disney and 2 months later the arb-forum simply ordered that Godaddy (the registrar) transfer the name to Disney in accordance with the ICANN UDRP policy.
    Disney based there case on the grounds that the domain name incorporated their trademark, respondent (my friend) has no legitimate interest in the domain name and that the domain name is used in bad faith. (as mentioned in an above post, so I guess this is all you need)
    After contacting via e-mail, and having not responded to them, Disney decided to send 100 pages of documentation outlining their course of action to his home address. lol

    Maybe you could use some of the above info to create an e-mail warning him. If that doesn't work then I'd get some legal representation.

  19. #19
    Non-Member demosfen's Avatar
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    It's possible that he is not even planning to use website to compete with you. I would just contact him and inform that it's illegal for him to use your trademark unless he is in unrelated industry.
    I wouldn't spend money on lawyer until you are sure of his intentions, it could be quite well just misunderstanding. I was contacted by a lawyer once, whose client thought we were selling illegal copies of his product. I don't know how much they charged for a letter, a few emails and a phone call, but if their client contacted me directly, I could send them proof and it wouldn't cost them a penny

  20. #20
    is not my name biggdesign's Avatar
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    I suggest you email him first, then comes the legal settlements.

    Can we have a look?
    stay hungry, stay foolish.

  21. #21
    SitePoint Evangelist CapitalWebHost's Avatar
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    Quote Originally Posted by thody
    I agree as well. Most people are clueless before they're evil. Let him know, ask him to stop, then take action if you need to.

    You also need to decide how important it is to you. If the odds are that him using it will have no negative impact on you in reality, I'd maybe just let it slide until it becomes an issue. Lawyers are $$$.
    Can't do that. You are required to take reasonable actions to protect your trademark, or lose it.

  22. #22
    SitePoint Evangelist CapitalWebHost's Avatar
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    Quote Originally Posted by demosfen
    It's possible that he is not even planning to use website to compete with you. I would just contact him and inform that it's illegal for him to use your trademark unless he is in unrelated industry.
    I wouldn't spend money on lawyer until you are sure of his intentions, it could be quite well just misunderstanding. I was contacted by a lawyer once, whose client thought we were selling illegal copies of his product. I don't know how much they charged for a letter, a few emails and a phone call, but if their client contacted me directly, I could send them proof and it wouldn't cost them a penny

    Doesn't matter really if he's competing with him or not. Say I have a business that sells, oh...childrens books. Some sleazebag sees that my companies very popular and that my trademarked name is all over the net..let's call it....Tots.com. So he decides to take advantage of that and registers and uses tots.net and it becomes a porn site.

    So not only is he infringing on my trademark name and while he's NOT directly competing in the same business, he's devalueing MY trademark due to the nature of his biz. Parents hear about these great books, type in the wrong doman name and end up looking at a porn site.

    So you see WHY you need to protect your trademarked name even if they are not competing in same business.

    Companies like Microsoft and Disney don't go after this because they get jollies from it...it's expensive to protect your trademark, but it's NECESSARY to do so from both a legal standpoint and business one.

  23. #23
    SitePoint Zealot Kakki's Avatar
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    Trademark defending is the responsibility of the trademark owner. Whenever I find someone using my registered trademark, I simply send them a nice, polite, carefully worded email with a link to the USPTO office website with my specific trademark registration.

    I then explain that as owner of the trademark, they do not have my permission to use it and to kindly remove it and cease from trademark infringement.

    I request they reply to my email in a timely matter, with a reply that details out that they understand the issues.

    If there is no reply, send a letter, registed mail to the domain owner (whois info)

    If no reply, get your attorney involved.

  24. #24
    Non-Member demosfen's Avatar
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    My understanding is that if they are not in his industry, there is nothing he can (or should) do

  25. #25
    Level 8 Chinese guy Archbob's Avatar
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    Yeah, two companies can have the same name if they are not in the same industry. However, trademarks are a bit different. I doubt any company could say for instance use Microsoft's logo.


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