need an urgent help about a TM issue please help!!

[mole]

Originally posted by safesys
the fact the uspto has initially refused ...

That's normal USPTO speak, safe. They speak quite scary sometimes. This was the history of a tm I did with them, thought I had lost the case, but its alive and well, thanks to tmarksman.com

2002-04-09 - Published for opposition

2002-03-20 - Notice of publication

2002-01-12 - Approved for Pub - Principal Register (Initial exam)

2001-12-11 - Communication received from applicant

2001-11-19 - Final refusal mailed

2001-07-27 - Communication received from applicant

2001-07-20 - Non-final action mailed

2001-06-12 - Case file assigned to examining attorney

 

mole but it hasn't been granted yet - no registration number.

 

Yes I know mole, but right now they don't have a federally registered tm on that term despite what they claim in their email.

Also, a great many initial refusals never do get reversed.

 

Actually, given the cirumstances the best reply imo would be to ask them for the tm number and the date it was made live.

 

Originally posted by safesys
Actually, given the cirumstances the best reply imo would be to ask them for the tm number and the date it was made live.

this is a very good suggestion - may well stop them in their tracks

in the email they appear to be careful not to actually say they have a registered t/m

"and has filed a trademark application for Teen Steam with
the United States Patent and Trademark Office in connection"

 

[mole]

Originally posted by safesys
right now they don't have a federally registered tm on that term despite what they claim in their email.

True, absolutely true. It's not federally registered, it's only pending registration, true

 

[mole]

Originally posted by snoopy


"and has filed a trademark application for Teen Steam with
the United States Patent and Trademark Office in connection"

True, true. But that is also a lie, they filed for teensteam.com, not Teen Steam.

 

yeah mole looks like the wording of that email is rather amateurish,


eg

"It has come to our attention that your web site is utilizing the trademark teensteam.us "

shouldn't that read domain name?

 

[mole]

Originally posted by snoopy
"It has come to our attention that your web site is utilizing the trademark teensteam.us "

shouldn't that read domain name?

True, true, there is no trademark on teensteam.us, unless they are refering to their Bora Bora island trademark. This is misrepresentation, and can be subject to a legal suit.

They filed an application for teenstream.com, not teenstream.us.

 

[WeTLD]

From USPTO.GOV-------------

Typed Drawing

--------------------------------------------------------------------------------
Word Mark TEENSTEAM.COM
Goods and Services IC 041. US 100 101 107. G & S: providing information on a global computer network, namely, photographs, videos, link lists, games, on-line gaming, cartoons and animation, news, sports, fitness, weather, lifestyles, interviews, on-line magazines, stories, textual data, articles, and biographical. FIRST USE: 19970200. FIRST USE IN COMMERCE: 19970200
IC 042. US 100 101. G & S: and transmitting and distributing a data stream of adult activity on a live transmission via a global computer network, television and/or radio transmission, and spy cams. FIRST USE: 19970200. FIRST USE IN COMMERCE: 19970200

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76371138
Filing Date February 14, 2002
Owner (APPLICANT) RJB Telcom, Inc. CORPORATION NEW JERSEY 8601 N. Scottsdale Road, Suite 330 Scottsdale ARIZONA 85253
Attorney of Record Anna M. Vradenburgh
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

-------------------------------------------------------------------------

The registration is in word form only and includes the .COM whereby I believe his application will go un-approved based upon the inclusion of said .COM suffix.

There are no other applications pending or otherwise using the "Basic Search" function at USPTO thereby I would suggest ignoring this and not responding to them in any form other than a competent Attorney who will most assuredly show them the error of their ways.

Cheers,

Dave

 

had they done their research properly they'd find that federal tm registrations of domains are extremely difficult, if not completely impossible.

There are explicit examples of this in the USPTO.gov web site, citing what constitutes a registrable mark and what not.

e.g. BillBob.com is not registrable just because it's someone's name. But if you offer "Bill Bob's Pizza", "Bill Bob's Pasta dish" etc then "BillBob' can be registered.

This does Not mean that they don't have a case with a tm issue; a tm does not have to be federally registered in order to exist. They can still sue you and win.

 

[WeTLD]

This does Not mean that they don't have a case with a tm issue; a tm does not have to be federally registered in order to exist. They can still sue you and win.

To say they would win is quite overbroad.

Based upon their actual application for "TeanSteam.Com" The other registrant could place a claim for "TeanSteam.US"

Bottom line is...They Should have registered for a "Word Mark" of "TeamSteam" / "Team Steam" alone.

Cheers,

 

I am not a lawyer; but your suggestion that it's a non-issue downplays the situation.

Bottom line actually is: want legal advice? Call 1-800-LAWYERS

 

[David G]

Originally posted by serothehero I need a pro's opinion about an TM issue that a company sent me an email saying that I infringed a TM issue. I need urgent help please reply me so I can email the the email they sent to you so you can help me. Thanks.

I checked the Trademark Office and they have a pending TM application (far from approved) on Teensteam.com including the tld extension.

There is both good and bad news here.

Good News - In my opinion their WIPO case based on teensteam.com would be a weak case since the TM if approved includes the domain extension. I don't think a .US extension would conflict with a TM even if a TM or SM was issued.

Bad News - Amazingly they do not need to have a Trademark or even a Trademark or Service Mark Application. It's possible they could win a WIPO Case even without applying for a TM based on the so called "first in commercial use doctrine."

If they prove they are well known by the name "Teensteam" (without the .com) and were using it longer than you, they would likely win at WIPO. There have been a number of cases decided in this manner in favor of the complaining party.

If they are smart they will pursue it based on Teamsteam without the dot-com, and may win. If they prosecute the WIPO case based on the .com name they would likely lose.

This is the reason we strongly recommend a privately issued Servicemark Certificate, to prove commercial use of a name and its extension included.

A private SM is very quick and low-cost and is approved most all the time if the tld extension is included. The tld ext makes the name unique as there can only be one, owned by the current registrant. Without the extension multiple TM's and SM's are possible.

P.S. An official government SM is of course better than a private SM, but is also costly and can take yrs to process, and may not be approved in the end.

For more details please visit -

http://www.trademark-protection.org

 

Although these certificates are low cost etc, what is their validity in displaying 'previous use' of a name?

My USPTO experience was extremely smooth and took a little over 8 months from start to finish, at a cost of roughly $350. I did my homework and processed the whole thing by myself - not a lawyer LOL - and that can tell you a lot

 

[David G]

Originally posted by timechange
Although these certificates are low cost etc, what is their validity in displaying 'previous use' of a name?

The so called First In Commercial Use Doctrine is very important, frequently the number one issue in WIPO Cases or Trademark lawsuits.

That doctrine is referred to at the US Patent & Tademark Office website, and also at many legal resources on the Web.

A private Service Mark Certificate can prove commercial usage and the date of first use, a very important legal issue.

P.S. Your application taking 8-mos was very unusual, they normally take much longer, frequently 1 to 3 yrs., I think the average time is approx' 18 mos. What name do you have a trademark on, just wondering?

 

timechange

 

The USPTO have publicly stated in the past that they are reluctant to issue tm's on domain names - so I can't see this app going anywhere.

Also, people have relied on common law tm's and won at udrp - but there have been several cases where because a tm has not yet been granted or has been refused the panelists acknowledge that it is outside of their scope to determine if a tm is likely to be granted or to find rights that the USPTO havn't.

 

[krisblade]

The last time I got a similar case, I just offered the name for 1k, we close a deal, because they wanted to avoid the annoying process and money expenses of a WIPO case.

Well... that was my particular case.