quick TM question

**j8jweb** · 01-15-2003, 01:35 PM

I have the domain htvnews.com which appears to relate to television programmes in two different countries. I imagine it is also TM'd by each country. They are: Helsinki Television (HTV) in Finland, and HTV News in the UK.

What would happen if I got TM actions against me from both companies? Can that happen? Or, considering the trademark is owned by both companies, is it something they can enforce anyway?

**jberryhill** · 01-15-2003, 01:43 PM

That is indeed a quick question. It is unfortunate that it does not have a quick answer.

Can you get complaints from both companies? Certainly.

Can either company enforce its own trademark? Certainly.

**j8jweb** · 01-15-2003, 01:54 PM

Actually, I just checked the UK patent office website, and it seems that HTV is trademarked, but HTVNews is not trademarked. The TM types are WO (Word only) and SW (Stylized word)

Does this mean I could TM HTVNews.com myself?
Either way, I am still concerned about what I should actually do if I got TM actions from both companies.

**DomainPairs** · 01-15-2003, 02:11 PM

I'm not a lawyer but I have been exploring a very similar situation. It seems there are precedents for you to set up a site with a link to and a description of each of the tv companies. You would be providing a service to surfers by allowing them to select the correct url for their search. You may also be able to put non-competitive advertising on this site. It seems that you cannot approach either of the tv cos with a view to selling the name though.

**jberryhill** · 01-15-2003, 03:07 PM

"HTV is trademarked, but HTVNews is not trademarked"

There must be some sort of virus that spreads this particular variety of group madness.

I'll try again with different words, as I have failed miserably to express the following concept adequately in many other threads.

Trademark law is not about ownership in gross of specific strings of alphanumeric characters.

If I, as an attorney, develop a trademark interest in the term "John Berryhill" for the provision of legal services, then for someone to say "But his trademark is not 'John Berryhill the Lawyer'" is outright nutty.

Now, in the UK, the registered trademark HTV is used in association with the provision of... uh.... NEWS! That is to say that HTV is a brand of news publishing or broadcasting service.

Now, if someone were using the term "HTV" in the UK as a trademark for "Happy Therapeutic Vitamins", it would be beyond clear that they weren't trying to get a free ride off of the goodwill accrued in the term "HTV" in connection with that brand of news publishing.

However, the addition of the word "news", which are the very services provided under the mark "HTV", makes it a *stronger* argument that the domain name was intended to target their news publishing services, not a *weaker* one because "HTVNews is not trademarked".

A lot of people are named McDonald, and anything owned by a person named McDonald might be called "McDonald's" (but it is such a famous mark that virtually nobody could use it as a name for a fast food restaurant). But if you go out and register "McDonaldsHamburgers.com", because "their trademark is McDonald's, not 'McDonaldsHamburgers'", then you should be thankful that committment to an institution for the insane is not an option for UDRP panelists.

**j8jweb** · 01-15-2003, 03:35 PM

I see - hey no offense but I am totally new to this, everyone starts somewhere I guess.

I am still interested in what you'd suggest I do with the names though, if I got a TM action against me from both companies... ?

**DomainPairs** · 01-15-2003, 03:50 PM

John,

I think the problem lies in the fact that what you say is both logical and sensible. It is also the law, and this unusual coincidence causes the confusion.

**DaddyHalbucks** · 01-15-2003, 04:04 PM

The best defense is:

1. to have a legitimate use for the domain
2. to do business in another field of use
2. to clearly do business outside of the geographic areas of those other companies.

This is not legal advice. I am not a lawyer, just a guy who knows a bit about domains and TM law.

**j8jweb** · 01-15-2003, 04:09 PM

I live in the same area that HTV West in the UK operates in.

So, am I right in thinking that if I do nothing, I'm probably screwed, if I pass it on to one of these companies in favour of the other, I'm screwed, and if I set up my own site, I'm probably screwed too?

Which leaves...nothing. Uh oh.

**DomainPairs** · 01-15-2003, 04:32 PM

Did you read my first post. I've set up a proposed site like this and got some very positive comments.

**HOWARD** · 01-15-2003, 08:01 PM

Bele\ieve it or not - I agree completely with Dot Com Cowboy. If you use it in a completely unrelated business, you will have no problem defending a UDRP action.

Toronto Star Television brought such an action against my client who had registered TSTV.COM on the basis that their TV station in Toronto was known as TSTV and that they had a Canadian Trademark. My client was using it to direct to a Trans-sexual Transvestite site which is known as TSTV in the vernacular - WE WON!

**Banned: timechange.com** · 01-15-2003, 08:26 PM

Great day for transexual transvestites from Transylvania

**DomainPairs** · 01-16-2003, 03:59 AM

Interesting.

Presumably a trans-sexual trans-vestite is a man who has an op to become a "woman" and then wears men's clothes.

Think I'll just stay as I am.

**pljones** · 01-16-2003, 08:02 AM

John and DotComCowboy's advice is good. But you might want to take at a case won by CNN - see http://www.arbforum.com/domains/decisions/100709.htm as an example.

**jberryhill** · 01-16-2003, 09:56 AM

It's just a jump to the left....

**octobus** · 01-16-2003, 11:26 AM

Helsinki Television (HTV) only functions a cable television operator.
They do not produce any own material. Therefore, their interest in htvnews.com is quite limited.

**j8jweb** · 01-16-2003, 05:01 PM

http://www.htv.fi/yritysinfo/default.asp?f=66

they seem to have a magazine called htv news...

**jberryhill** · 01-16-2003, 05:09 PM

...and then a step to the ri--i-ii-i-ight...

(c'mon people)

**Banned: timechange.com** · 01-17-2003, 12:17 AM

Originally posted by jberryhill
...and then a step to the ri--i-ii-i-ight...

(c'mon people)

...but it's the pelvic thruuuuust, that really drives you insa-a-a-a-ane....

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