Can’t do that. You are required to take reasonable actions to protect your trademark, or lose it.
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.
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.
My understanding is that if they are not in his industry, there is nothing he can (or should) do
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.
My understanding is that if they are not in his industry, there is nothing he can (or should) do
Not be argumentative but this is incorrect.
Do you suppose a plumber could start to use the name: “Microsoft®” without a problem?
Or a shampoo company could use the name “Coca-cola®” without a problem?
Noooo…
Kakki,
There are many companies with the name Avery and many with the name ACME despite trademarks on both those names. What you are talking about (with Coke and Microsoft) is trademark dilution which requires a name to have a clear secondary meaning and to be considered famous (not simply in media terms but within its industry/ niche). Before the dot-com era it was rather common to see people with identical trademarks in different geographic areas and niches. The internet has clouded this issue as there can be online one “xyz.com” but some of the principles remain in place. For trademark infringement claims you have to literally be harming the business by confusing your name with theirs and costing them business or doing harm. For dilution the types of breach are much greater and allow you to go after companies for simply taking away from the power of your name, but few trademarks quality in this regards.
As a general rule, if they don’t compete with you, don’t harm you, don’t harm your mark, aren’t in your field and don’t cause you a loss, they aren’t in violation.
Referances: All trademarks for “Acme” http://tess2.uspto.gov/bin/showfield?f=toc&state=havu2p.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl~%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=acme&p_tagrepl~%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query
If you own trademark xxxx and own the domain xxxx then is the person using a different extension or combining it with something else ie xxxxdesign or xxxxtowing.
I don’t think anyone here is deliberately trying to be negaive but without specifics we can only speculate and look at all angles.
Again, not correct.
Try opening up a site called MicrosoftStuff.com and sell miniture stuffed animals or something. See how long before M$ and it’s TM lawyers decend on you and ICANN pulls your domain.
Depends on the word and its application, for example there are many trademarks on the word Capital used in your url.
For those interested in applying for a trademark or patent in the US the place to start is
www.USPTO.gov - United States Patent and Trademark Office
I don’t know if the information they provide about trademarks outside the US will answer your questions but you will most definitely get all your US trademark questions answered here. I especially find their patent and trademark search feature very helpful when doing research for clients.
Ted S is right on the money… Yes it is true that two companies can have the same or similar trademarks if they are in very different industries. ie: Apple computers and Apple records.
But the reason you would not see “Coca-Cola” used in a different industry is because they bothered to register MULTIPLE TRADEMARKS in different areas. For example, you should be able to find a filing that covers “branding” for use on t-shirts, merchandise, etc. Then you’ll find one for soft drinks. And more under other categories.
It’s a tricky sticky thing trademarks… And as usual, the people with the deepest pockets win (it’s expensive to register a dozen+ trademarks just to cover the different areas of possible use).
~RB
Off Topic:
Oh man, I’ve got my summer planned now. 
I would FIRST send them a cease and desist notice…
I’ve had very good luck with those.
Just to clear up what seems to be a bit of confusion, one does not have to have his trademark registered with the USPTO to go after someone. However, one has much more legal basis and a much higher chance of winning if his trademark is registered, as then it’s official.
Many people with simple "TM"s have successfully gotten the violating party to stop whatever it was they were doing by simply sending C&Ds (cease-and-desist letters). However, if the person is, unfortunately, not intimidated by your obnoxiously large vocabulary and hopefully smug lawyer, people have won in court with simple non-registered trademarks; it’s just harder.
I called trademark office. They said they don’t protect domain names and have nothing to do with it, so what do you think?
They don’t protect domain names, they protect names in general. That’s nothing new and certainly nothing important here. If someone is using a name you have registered (either via a trademark or a “common law mark” as SniperDevil said) and if they are using it for financial gain in a way that competes with or harms your name, you have a right to go after them – in fact, you have an obligation to do so. What USPTO is saying the same thing the courts are enforcing – XYZ is the name, XYZ.com is no different because it has an extension at the end, that’s not something you can use to distinguish your name from a trademarked one.
Ted, thanks for clearing up what a “TM” is actually called; my mind was blank for those few minutes.
Hi,
If you own a trademark on colegsirgar (or something similar) you can do this - no matter if your domain is .ac.uk, you can submit a WIPO dispute over the .com version.
I would just recommend possibly hiring an attorney to write the complaint and make sure he reads A LOT of old cases/decisions. They helped me a lot when I had to do it.
Regards,
c4n
Trademarks are a sensitive subject, and I’m no expert but the little parts I do know are as follows;
Trademarks are national, if it’s not an international registered trademark, and they’re from outside your country, you can’t do squat, same market or not. To check out international trademarks, go here: http://www.inta.org
Some of the advice in this thread was accurate, others not so, the best advice anyone here said was contact your attorney, and find out what you can do.