Trade mark problem, please help me

[xdn]

I received a complain about TM problem

here's the record in the database of United States Patent and Trademark Office:

Filing Date January 25, 2000
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition August 22, 2002
Registration Number ****
Registration Date July 8, 2004

the registration date of my domain is 28-jul-2002

is there TM problem? Thank you!

[simon]

your name was regged before the TM was filed so i wouldnt worry much and besides that if i was in China, i wouldnt even care to reply to their email but would be careful for any TM violations

[Creature]

^ Isn't the TM filing date just as important as the TM registration date? Is it a .com name ?

[Avensen]

I think TM filling/registration dates are not so important, as bad faith. In theory, you can lose your name even if it was registered before TM filling date, (if you 'badly' profit from someone's TM using that domain).

[dndriver1234]

I think it is no problem.

[dndriver1234]

double post

[dndriver1234]

double post

[xdn]

Thank you all for your help!

is the filing date important? my name was regged after the date.

your name was regged before the TM was filed so i wouldnt worry much and besides that if i was in China, i wouldnt even care to reply to their email but would be careful for any TM violations

yes, it is a .com name. thank you!

^ Isn't the TM filing date just as important as the TM registration date? Is it a .com name ?

I am not using in bad faith, just a coming soon page now. Thank you!

I think TM filling/registration dates are not so important, as bad faith. In theory, you can lose your name even if it was registered before TM filling date, (if you 'badly' profit from someone's TM using that domain).

[jberryhill]

You might try posting the real data, instead of fictitious data (see below).

If deciding domain disputes was as simple a matter as comparing the domain registration date to a set of dates in a trademark registration record, then UDRP opinions would not be several pages long.

Whether or not there is a "problem" is not a function of these dates, all of which may or may not be meaningful in your situation.

I am not using in bad faith, just a coming soon page now.

Okay, let's keep that quote in mind and break this thing down....

1. First Element - Identity or Similarity With a Trademark?

Yes or no? You seem to indicate that it is.

2. Legitimate Rights or Interests in the Domain Name.

Well, let's see... you registered the domain name in 2002, and you say that now, four years later, it is a "coming soon" page. That would not indicate use of the domain name for a bona fide commercial purpose, or substantial preparations to use the domain name.

3. Registration and Use In Bad Faith

Okay, now here is where nobody - nobody - can crawl into your mind and know, for sure, what you were thinking and registered the domain name. So, in order to figure out why you registered the domain name, there might be a number of other things a panel might consider. But, remember, out of three possible points, you are already down two.

This is a 1A application - i.e. an application based on prior use of the term as a trademark - so you left out one of the most important dates, the date of first use. Was it a long time ago? I could be using a trademark for decades, and it could be very famous and well-known, but I might have only thought to register it as a trademark a few years ago. The dates of various steps of the application, while they may be important in various contexts, don't really matter as much as things like:

- is the trademark inherently distinctive? In other words, is it a made up term like, for example, "XEROX" or "PANASONIC" or "VERIZON" which have no meaning in any language on the planet other than as a reference to the products for which they are known,

- what other domain names do you have? Do you have a lot of common words, phrases, and expressions, or do you have a lot of clearly problematic domain names,

Factors like these are going to mean a lot more than a set of dates in a trademark registration record.

That said, there is something extremely peculiar about the date sequence you posted. If the application was filed on a 1A basis, and published for opposition in August 2002, then in the normal course of events, it would have registered at around December 2002. But this application didn't register until nearly two years after it was published for opposition.

This indicates one of two things:

First, that there was an opposition proceeding. Given that another party opposed the registration, unsuccessfully, there is likely a wealth of material pertaining to that proceeding that could shed important light on the strength of the mark.

Second, and more accurately, you made these dates up. The reason I conclude that is because the date fields are searchable. There was no application filed on that date which issued on that date.

In fact, the search (20000123)[FD] shows that there were 56 applications filed on January 23, 2000.

Most importantly, there is no reason to conduct a search for trademarks registered on July 8, 2004, because that was a Thursday.

The registration date of a US Trademark, folks, will only fall on a Tuesday. Trademark registrations are issued in weekly batches, and all of the registration dates are Tuesdays (even if that Tuesday is a holiday).

[Avensen]

Brilliant post, John. Thank you!

[snicksnack]

Thanks John for the free lecture. Learnt alot. Hope to see more such detailed posts from you, to gain more inside.

[jberryhill]

Whoops... minor nit...

That was Jan. 25, not Jan. 23.

There were 590 applications filed on Jan. 25, 2000. The reason for the low number on the 23rd was that it was a Sunday, hence they could only have been filed electronically.

Still... Of the 590 applications filed on January 25, 2000 which issued as registrations, there were only 10 which registered as late as any date in 2004.

(20000125)[FD] and (2004????)[RD]

And there is only one application filed on any date in 2000 which was published at any date in 2002 and registered at any date in 2004, and that appears to be due to an abandonment and reinstatement.

[Creature]

JB thanks for another interesting read. Still hoping that you write a book on this subject.

xdn, do you have other problematic names in your portfolio? ? Please can you PM the domain name.

[xdn]

Thank you, all of our members here, for your generous help, especially for jberryhill's invaluable free lesson.

it is one of my good friend's domain name. it's true the tm info is made up, because he do not want to reveal it. He doesn't have any other problematic domains, as I know.

I just suggest him to develop the name in a way not to violate the content of the TM holder, in that way he can win the second and the third point of the 3 points jberryhill given, though the domain name is regged after the date of first use. sggestions are welcome to see if he can do in this way. Thank you!

JB thanks for another interesting read. Still hoping that you write a book on this subject.

xdn, do you have other problematic names in your portfolio? ? Please can you PM the domain name.