Objection to TM application = sale

[domaingenius]

As I have always thought, the IP rights in domain names can be as useful/valuable as the domain name itself. I recently noticed that someone was applying to register a TM for a particular name. I informed them that the same name was being used via a domain name for similar products (albeit PPC) and said I would be objecting to their TM application. On the wire they paid up and bought the domain name and the rights to the name.
So dont alway be on back foot, move to front foot and wrong foot the opposition (i.e. end users). Got another one going now as well same thing so lets see !.Bit of a gamble as may lose opposition but still worthwhile.

DG

[NameGuy]

[domaingenius]

Yes I know was written in "double dutch" language, lol. What I was meaning to say in nutshell is that domainers should not allways sit there and wait for someone to get TM and come after the domain ,they should instead be proactive and object to any TM applications for which they have the domain name .

FH

[cyberlaw]

Yes, this is certainly a right you have. A federal trademark application is published for review and you always have the right to object to the application. It's a good practice to keep an eye on applications that may infringe on your names and object as required as you have done. Congrats on the results.

[denny007]

Well - there are 200 countries in the world, how one can watch it all and match it with tens of thousands domains to file a opposition ?

[Acro]

Great practice. Except that, when your bluff fails and they proceed with the tm application regardless and you, the bluffer, have to either put up or shut up. Or even better, when they take you to WIPO with solid evidence that you attempted to extort them.

[domaingenius]

Well - there are 200 countries in the world, how one can watch it all and match it with tens of thousands domains to file a opposition ?

The only TM's really worth watching are USA, UK and European.

DG

[denny007]

The only TM's really worth watching are USA, UK and European.

Still impossible to watch it all, thats like 25 TM registries, dunno how many application is every month but need to match it against all domains...

[cyberlaw]

Great practice. Except that, when your bluff fails and they proceed with the tm application regardless and you, the bluffer, have to either put up or shut up. Or even better, when they take you to WIPO with solid evidence that you attempted to extort them.

A truthful well-written opposition to a trademark application is not really "bluffing." An opposition may not win, but as long as you have arguments in your favor it does not hurt to make them, so long as you don't mind investing your time and effort on it.

[Acro]

I'm under the impression that the OP recommends facilitating an intent to objecting a TM application - hence my reference to "bluffing" - as a scare tactic. Unless one is prepared to move forward with a tm objection and its financial cost, any such reference to it is pointless. Savvy corporations do not fall for such statements which, unless materialized, can be perceived as threats or even worse; especially when the actual intent is to sell the domain name to the tm applicant.

[Dale Hubbard]

Having just applied for a TM with the USPTO myself, it's my understanding that the suffix describing the entity as a domain name is irrelevant. E.g. if I applied for protection for the domain whathaveyou.com, the examiner would base his decision on the phrase "whathaveyou" and disregard the rest.