This could get interesting! Argument with a TM lawyer!

[JuniperPark]

I got a phone call today (no prior contact) from someone claiming he owns the TM to a name I'm using. He essentially just said I'm "on notice" and "what do you intend to do about it?". I said I would look it up at the USPTO and get back to him.

This is a 2 word English phrase, somewhat commonly used for many years. The TM is on file (filed 5 years ago), and is specific to "publishing self help law books".

Yes, that's where this may get interesting - he (claims) to be a famous published author of self help law books covering topics including TM law!

Among other things, he told me that "trademark owners are always entitled to the related domain name", and he "has never heard of any case to the contrary". I pointed out that this rather broad phrase has many uses, and mist of my buyers are not even in the USA; his reply was that his little specific use described in his TM filing entitles him to all possible uses, all around the world.

More facts:
- A British legal firm owns the .NET, all other extensions remain unregistered.
- A US based lawyer owned the name 2 years ago, until this guy called and threatened him and the name was simply dropped.
- Amazon lists him as the author of 8 books, 6 out of print. 2 have the term in question as a subtitle, both out of print.

- He hasn't specifically told me what he wants me to do with the name, but if I ask I want that in writing. If he wants it dropped (yet again), he's not protecting his mark. If he wants to own it, he's attempting a reverse hijack. If he wants me to notify potential buyers of his mark, I'm fine with that.

He ended the 1 hour call with "I'm sending you a letter and I intend to pursue this".

I'm considering putting up a very hard (and very public fight) on this.

Your thoughts?

[nameslave]

Originally Posted by JuniperPark

He ended the 1 hour call with "I'm sending you a letter and I intend to pursue this".

You spent an hour on the phone with a stranger?

[JuniperPark]

Lawyers love to talk, and he was saying some things that I can use against him

[Salient]

Any good lawyer would have never called. He would have hired a lawyer and sent it in writing. He may be serious, but he was trying to bully you with the phone call.

[Steen]

Originally Posted by JuniperPark

Lawyers love to talk, and he was saying some things that I can use against him

Recorded?

[JuniperPark]

Originally Posted by Steen

Recorded?

Not legal in California without consent, and not useful because audio recordings are now easy to edit.

[Salient]

I thought the law was one party had to be aware the call is being recorded? Thats how cops bypass the tapping laws, by having a second party agree to call and have the call recorded. Kind of like Amber Frye with Scott Petersen.

[tnt]

Is this lawyer suggesting that because he used a couple of common words, he's automatically entitled to the domain in every extention?

I want "TNT" in every extension. I've been using it for 45 years. It goes back even further, because my daddy always planned that his second born son have the initials "TNT."

Trademark laws are so screwed in the US. I wonder if a company that makes replacement windows would have gotten to windows.com if they'd have had a problem?

[Steen]

Originally Posted by Salient

I thought the law was one party had to be aware the call is being recorded? Thats how cops bypass the tapping laws, by having a second party agree to call and have the call recorded. Kind of like Amber Frye with Scott Petersen.

Some states require one party to know the call is recorded, some require both parties to know. I bet it gets sticky when Iowa calls Florida on a conference call with Washington g

[gworld]

I don't know what the words are but if USPTO has granted him a trademark then he has it. You should ask yourself if this domain name is really that important for you to pick up a fight since if you are using the domain in a field that is related to his trademark, he can file a complain with ICANN and most likely he will win.

He can then use the ruling from ICANN to sue you in a civil court for damages.

To go to ICANN will cost him about $2000 for the filing fees plus lawyer costs, so why not talk with him that if he really wants this domain he can pay you for your costs (as long as it is reasonable) and get it.

It is never a good idea to get in to a fight that you do not know the out come and over nothing.

[GT Web]

Originally Posted by gworld

I don't know what the words are but if USPTO has granted him a trademark then he has it.

Not true.

Although I dont have much legal experience, I know that this isn't always enough to give the complaintant the victory in a WIPO dispute.

[Dave Zan]

What an interesting story, JuniperPark! Do keep us posted.

Have you emailed any of the attorneys here for possibly more info on the guy?

I'm thinking he might use ACPA instead of UDRP in the hopes of running you
down with legal costs.

[JuniperPark]

Originally Posted by Salient

I thought the law was one party had to be aware the call is being recorded? Thats how cops bypass the tapping laws, by having a second party agree to call and have the call recorded. Kind of like Amber Frye with Scott Petersen.

Every US state is different. In most states, and in California, both parties must agree OR have a court-ordered wiretap. The Frye/Peterson calls were permitted because a court order was obtained in advance.

[seeker]

make a contract with someone overseas (that you trust).
Transfer the domain in question to them.
It would make going after the domain through US courts much more difficult, and he will probably want to skip WIPOing you
result=quick sale for a fait to both amount, assuming the domain's value is less than the hassle.

[namedropper]

Sounds like complete BS to me. When he says that a TM gives him a right to all domains with all extensions he is either outright lying or completely unfamiliar with the process. Either way it makes the likelihood that he'd get anywhere much less. And book titles, let alone subtitles, are extremely weak for establishing trademarks compared to other uses. I doubt he has a case at all, but then it would really depend upon the full details, which you probably don't want to post.

[DomainGoon]

The unfortunate part of getting into a fight with someone who is his own lawyer is that your expenses will be a lot higher than his. Some lawyers actually enjoy situations like that.

[tnt]

Originally Posted by DomainGoon

The unfortunate part of getting into a fight with someone who is his own lawyer is that your expenses will be a lot higher than his. Some lawyers actually enjoy situations like that.

Another old saw my daddy taught me was this: "A lawyer who represents himself has a fool for a client."

I'm sure many lawyers would argue with that, but I've read about it often enough in the local papers to believe it.

[jojoyohan]

Wait for the letter. Because you didn't receive any instructions to date you have no obligation to do anything.

[namestrands]

Agree, saying that if he was going to do anything he should of served you by now and contacted the registrar and filed the UDRP...

If you are offering the domain for sale then he can argue bad faith registration, you may also need to prove your legal right in the domain.

But he has to File the UDRP at a Cost of $1500, and then needs to research and submit the complaint.

You dont have to pay a dime, however Lawyers are Slimy Bast***s and they will use every under handed method in the book. You just got to think like them..

[HOWARD]

If you have a legitimate business use for your domain, so long as it is not confusingly similar to his trademark you are in good shape. Further, phone calls generally are not sufficient to make a case against you. Your best bet is probably to wait for the C & D Letter and then retain counsel.