Threat of TM when acutally no TM ?

[domaingenius]

In the UK there is a tort of threating a trade mark action when the person making the threat does not have a trade mark. Is it the same in the US ?. Reason I ask is that I have received an email saying they have a trade mark (which they dont) etc etc and usual BS.

DG

---------- Post added at 10:24 AM ---------- Previous post was at 10:23 AM ----------

Sorry about typos ,trying to type too fast.

 

[INFORG]

You can't really determine whether they have a trademark or not. That would have to be adjudicated. Just because it isn't registered doesn't mean they don't have one. Google "common law trademark".

Bottom line, you probably have no recourse for them claiming a trademark and threatening action.

 

[domaingenius]

You can't really determine whether they have a trademark or not. That would have to be adjudicated. Just because it isn't registered doesn't mean they don't have one. Google "common law trademark".

Bottom line, you probably have no recourse for them claiming a trademark and threatening action.

Thanks for the tip on that, as is slightly different to UK laws. I have seen this now on Google,that assists;
"Geographic limitation of common law marks:

Common law trademark rights are limited to the geographic area in which the mark is used. Thus, if a coffee blend is sold under the name BLASTER in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company's common law rights to the mark would prevent them from entering the California market"

DG

---------- Post added at 02:19 PM ---------- Previous post was at 12:32 PM ----------

Things have moved onwards just now. The company is registered in Delaware . It is now saying it does not have a trade mark, but has allegedly filed for one but it does not yet show anyway on the USPTO database . The filing anyway was subsequent to the regging of the domain. The actual company was registered before the domain was regged, but they did not start trading until after the regging . From my reading they cannot use an ,contended, Common Law trade mark under the Lanham Act or in any Federal procedure ,so they will be limited to the UDRP I guess ?.

DG

 

[INFORG]

It is likely they would go the UDRP route. It is always hard to evaluate these things without knowing all the particulars, but it sounds like you are on pretty solid ground. But, being right doesn't always mean you will win. Any negotiation for this name, or are they just trying to bully you off of it?

 

[domaingenius]

It is likely they would go the UDRP route. It is always hard to evaluate these things without knowing all the particulars, but it sounds like you are on pretty solid ground. But, being right doesn't always mean you will win. Any negotiation for this name, or are they just trying to bully you off of it?

They are trying ti bully me out of it. I have now transferred the domain to UK Registrar so can claim UK jurisdiction and promised them if they issue UDRP then I will issue proceedings in
UK and tie them in knots for 2 years or more.

DG