trademark advice sought - TM used on site

[windows22]

Hi I would like to get some advice from an Attorney or recommended any.

Just got this "unsolicited" email, the TM involved was effective from dec. and I have used this "TM" on my website.

As I'm not an American I have no clue what they are talking about:
"Lanham Act", "state trademark" etc.....

"we shall proceed with all steps necessary to protect our client's goodwill", what steps can they take, as I am not in the states?

In theory I guess I could register the same trademark in my country?

I cannot agree on this issue as I also have another domain and it's "trademark".XXX
I registered this in good faith before they applied for the trademark, and I have no intention in giving this away.

Specially I like the part: "a false designation of the original", In the TM application the company state that they first used the TM in 2001, this mean that they do not have the original as another company made a software back in 1995 and called it "Trademark".
This software got very popular and later became the "generic term" for this kind of software. A search on download.com for “trademark” gives results in around 100 different software’s.

I would like to have some advice as I don’t even know if this has anything to do with me as I am not situated in the US and are living and doing my business in Norway.

I would also get some recommendations on any attorneys to use if this company goes further on with UDRP and tries to steal my other domain that includes the trademark involved.

The email is included below

Thanks!

...........Start.............
We represent [Company] Inc., ("the Company"), owner of the federally registered service mark ”trademark” ® (Registration No. xxxxxxxx). Company has owned and used its ”trademark”® mark in connection with software sales of ”Softwarename” ”trademark” software that bla bla bla......., etc. on the Internet. The ”trademark”® mark, as you must appreciate, is of great value and importance to Company.
Recently, we have been advised that you are using the name "”trademark”" in connection with your web site and which sells a ............... software package. This letter is being sent to protest your continued, unauthorized use of a mark confusingly similar to ”trademark”® in connection with your Internet site. Your use of "”trademark”" (or derivative – “trade mark” or “trade-mark”) unfairly capitalizes on the goodwill and reputation embodied in Company's service mark.
This type of deceptive trade practice constitutes trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), a false designation of the original and false description under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and violates the state trademark and dilutions statutes and common law principles of unfair competition and misappropriation.
To ensure that you cease and desist of all unauthorized use of the mark "”trademark”" or any mark confusingly similar to ”trademark”® on any products, advertisements, web pages (domain names, web page titles, or page text), software product names, or in connection with any services, we request that you certify that: (i) you or any entity you are affiliated with or an agent of, immediately cease all use of the mark "”trademark”" or any mark confusingly similar to ”trademark”®; and (ii) you or any entity you are affiliated with or an agent of, agree to rescind and refrain from any further advertising bearing the mark "”trademark”" or any mark confusingly similar to ”trademark”®.
Please reply to this within (10) days to indicated your acceptance of the terms outlined in this letter. Should we not receive a positive response from you within ten (10) days of the date of this letter, we shall proceed with all steps necessary to protect our client's goodwill.
Do not use the text "”trademark”" anywhere within your web site, product name, or description. If you wish to use ”trademark”, you must list “softwarename” + ”trademark” at the top with a link to our site and a note indicating "”trademark”" is a trademark of “Company”, Inc.
........end..................

 

[DomainPairs]

I think it must be getting close to the time that the rest of the world took a stand against America claiming everything as trademarks regardless of previous usage. Is the American economy so bad that they have to invent a form of Internet piracy.

 

[pljones]

Take a look at the Picoliter.com decision, http://www.arbforum.com/domains/decisions/122205.htm . This might apply in your case.

 

[namedropper]

OK,

A) I don't see why you don't just list the name in question. What have you got to be afraid of? They're already threatening you, mentioning their name won't make anything worse.

B) It sounds like a complete reverse hijacking scam, but without more info (like the name, just because you claim it's generic doesn;t mean it really is) I'm not going to make any bets.

C) I don't know why this is being painted as an American-only tactic. Can you say newzealand.com, Leonardo.com, barcelona.com, jamaica.com, dvla.com, etc.? All of those were non-Americans pulling the scam. Some people really have to drop this crazy anti-U.S. hysteria.

--
Dan Norder - Savanna.com, FineGold.com, etc.
High profile and niche domain names for sale

 

[DomainPairs]

New Zealand is not a generic name

That's not the main reason for my comments about American buisness tactics. It has been triggered by the activities of Ebay and most recently PayPal. It stems from the American legal system that seems to give advantages to Americans and restrict corporate activities at home. In a bid to maintain profit growth, American business is turning to the exploitation of the rest of the world. Visa, AOL and Microsoft are further examples of this approach. It seems to me to be madness at a time when other countries are starting to threaten Americas strength in certain areas. The ultimate would seem to be the loss of the dollar as the Internet currency, a very real possibility if American credit card restrictions and penalties continue for the rest of the world. American buyer fraud through credit card chargebacks was one of the reasons I stopped trading on Ebay.

 

[namedropper]

No offense, but where the heck did that come from?

You posted about how it was supoosedly the Americans falsely claiming trademarks. When I pointed out a small sample of names that people in a wide variety of countries tried (and some successfully I might add) to steal by falsely claiming trademarks, you start babbling about chargebacks and claiming that's what you really meant.

If you meant chargebacks you should have posted about chargebacks on some thread talking about chargebacks. Or did you see the word chargebacks anywhere in this thread?

And, honeslty, as far as that goes, chargebacks are not an American only thing either. From my experience the most chargebacks are from Eastern Europe, Asia and South America. In fact, I don't think the businesses I've done ecommerce for have ever had a chargeback from anyone in the U.S., which is especailly interesting because that's where 99% of the orders are for. But then maybe they had and just never told me, I don't know.

I do know, however, that merchant accounts here recommend blocking orders from non-U.S. countries as a major step in preventing fraudulent orders. If Americans were the problem then it seems to me that they'd be making the opposite advice.
--
Dan Norder - Savanna.com, FineGold.com, etc.
High profile and niche domain names for sale

 

[DomainPairs]

Most of my attitude comes from problems with Ebay's treatment of non-Americans, and the fact that I have lodged a complaint about PayPal with our trading standards authority. I understand their need to sustain profit growth, I don't like them making false advertising claims to do it.

This thread was about the hijacking of generic words as trademarks (windows for example) and this does seem to be an American hobby. I just felt that it was another way of creating profits at the expense of the rest of the world.

I accept your point about fraud outside America. Three companies in England with which I had dealing have gone bust because they started trading with Russia.

I wasn't "babbling on" about chargebacks, I was pointing out that there is a far wider malaise which is affecting world perception of America. The recent Visa changes are an example.

 

[windows22]

Som more info:

The trademark involved is: "edited because xxxxxxxxxx"

Status: PUBLISHED
Official PTO Status:
Published for Opposition

"Published: The application has been granted a filing date and has been published for opposition (another entity has 30 days from the date a mark is published in which to oppose the registration)."


From inta.org: What is a Generic Term?

"A generic term is a word or phrase that is or has come to be the common term associated with or known as a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. For example, “clock” is a generic term for timepieces. Generic designations are not registrable or protectable. A trademark may potentially become generic if it becomes so widely known and used with a particular category of goods or services as to designate the category of goods or services. In such instances, the "mark" will not be registrable and a previous registration for such a "mark" may be subject to cancellation by a third party. Examples of marks that have become generic over time include “escalator,” “linoleum,” “zipper” and “yo-yo.” This loss of trademark status is sometimes referred to as “genericide.” It should be noted that what is generic in one country may not necessarily be generic in another, for example, the designation ASPIRIN is generic in the U.S. but is not in other countries."

A search in google groups:
http://groups.google.com/groups?q=popup+killer&hl=en&lr=&ie=UTF-8&oe=UTF-8&scoring=d


At This point they want me to stop using "generic term" on one of my website, but the terms I have to accept means I also have to give up the domain in my profile.

So what now? ignore? give up?
claim it's an "common term associated with or known as a particular category of goods or services to which it relates"??
free speach etc......

claim "such a "mark" may be subject to cancellation by a third party"

hmm, beeing a norwegian in norway don't seem to be easy after all.

Thanks for all helpfull input!!

 

[windows22]

too much rome............

 

[Manic]

I'm not a lawyer, but I believe that if you registered and were using the name BEFORE the U.S. company in question registered their trademark, then you don't have a problem, and they are just trying to scare you into giving up your rights to the name.

In short, if you were USING the name first, you get to keep it.

Check this with a trademark lawyer.