Unregistered Trademarks,Infringement & Online Use

[lewnytewny]

Hey everyone thanks for reading this post, it's my first in a looong time. I have a query about trademarks and domain name use. Here goes:

If I have developed a trademark but have not registered it yet...is it safe to use online as a domain name? I have done the "poor man trademark" by mailing all the information to myself via registered mail a while back. I own both .net and .com domains. Now what I would like to do is develop my brand via social networking sites and blogs. I will want to use the name as: wwwdomaincomslashmytrademarknamehere on several social networking websites. Until I have the capital to go ahead and trademark and build the websites I want to go ahead with publishing the idea and creating buzz possibly to even gain donations or investors via the website. All I want to do is ensure my idea concept is safe because of the fact I have obviously registered the major domains and sent myself the sealed document via USPS. Even sending myself email seems a viable way to prove that I am the originator. Any helpful advice in this arena will be greatly appreciated!

[Dan C. Rinnert]

A "poor man's" trademark or copyright will likely not hold up in court. How would they know you didn't mail yourself an unsealed envelope ten years (or whatever) ago and stuff it with something you created yesterday? Even if you addressed it on the flap side of the envelope, so the postmark would be stamped across the seal, what's to say it wasn't sealed lightly and sealed more securely after you put whatever in it? So, the "poor man's" method really doesn't establish anything.

However, with a trademark, in the U.S., registered or unregistered, the determining factor is its first use in commerce. So, if you can establish that you used the trademark in commerce before someone else trying to claim a trademark did, you're protected.

So, it's probably in your best interest to start using the name and domain name to establish use. Of course, if someone else is already using it, and possibly already has a trademark on it but not the domain name, you could run into problems. But, if you're the first, start using it before someone else does!

Disclaimer: I'm not a lawyer, so for the most accurate information, you should contact a trademark attorney.

[Kay King]

You can use the name as long as someone else hasn't already trademarked it - but you can't protect it is as "yours" if you haven't registered it.

IANAL - but you can find that info in government trademark sites online.

From the site of a law firm:

There is no such thing as a "poor man's trademark," which usually involves sending yourself or someone else a certified letter regarding your trademark. This is similar to the "poor man's patent" (which itself is a myth, and can hurt your patent rights.) Sending yourself a certified letter only proves that you sent the letter- it does not prove the contents of the letter, which itself can be opened and resealed.

kay

[Dan C. Rinnert]

Originally Posted by Kay King

You can use the name as long as someone else hasn't already trademarked it - but you can't protect it is as "yours" if you haven't registered it.

In the U.S., it is my understanding that in order to register a trademark, you have to have first used it in commerce.

In the U.S., trademarks are similar to copyrights. You have some protection by using it and claiming it as a trademark by putting a ™ next to it, but you don't have full legal protections and remedies unless it is registered, which permits you to put a ® next to it.

Disclaimer: I'm not a lawyer, so for the most accurate information, you should contact a trademark attorney.

[cosmokid]

I own a trademark and it really helped me when I went through that process to have already been using my trademark in many areas of commerce - website, syndicated newspaper columns, magazine columns, and radio shows. I was already doing all these under my trademark name. Even so I had to scramble around and try to get copies of everything from the first date of use - for instance, trying to track down physical copies of the first newspapers I was published in (not always easy to do if it's not a local paper) and lots of screen saves of my early website work. Just do a lot of careful record keeping and keep a date journal of everything you're doing - it will help you a great deal if you later get started with the registration process.

The other thing you should do (before even trying to use it in commerce) is as much due diligence as you can to make sure you are first to use the trademark. Remember a trademark can be just a name, it can be an image, and/or it can be the name and the image. Usually for IM purposes it's easier to just register the name - the exact word combination - so if you already have domains with it in that's a great start.

Your trademark attorney will start with their own due diligence process where they work with various services to do deeper research into others who might already be using your trademark. They will have resources (private detectives, proprietary databases) that you won't, so keep in mind that with your own research you still might not find others who are already using your mark. You might not discover that someone else is using it until you work with an attorney and do that deeper level of due diligence with them.

Only after they've completed the due diligence research to their satisfaction, and they haven't found anybody else using your mark, will they agree to go about the trademarking process with you. It can take a year and a half (that's how long it took me - even with a trademark where nobody is protesting the application, it can take quite a long time because the trademark office is notoriously understaffed). During that time though your attorney will likely recommend that you keep using it in commerce and you'd just use the little TM mark next to it. After it is officially registered you change over to using the little r with a circle around it to show that it's been registered.

Anyway, it's probably safe to start using it now after you do a little research, with the TM symbol next to the mark - put this on your image headers, put it everywhere like in your online newsletters, etc.

Jennifer

[Kay King]

I'm not sure you have to use it in order to register it - but you may be right as I'm not a legal eagle. It would seem that a manufacturer creating a catchy brand name would want to file for trademark before making that brand public. But that's just my thinking and may be wrong.

I did post in a different thread yesterday a quote from a US govt site that states you may not use the trademark symbols unless you have the trademark already registered.

kay

[Kay King]

I'm not sure you have to use it in order to register it - but you may be right as I'm not a legal eagle. It would seem that a manufacturer creating a catchy brand name would want to file for trademark before making that brand public. But that's just my thinking and may be wrong.

I did post in a different thread yesterday a quote from a US govt site that states you may not use the trademark symbols unless you have the trademark already registered.

I don't think it's a good idea to claim trademark by using the symbols if a trademark doesn't exist. It makes a false statement.

kay

[Dan C. Rinnert]

Originally Posted by Kay King

I'm not sure you have to use it in order to register it - but you may be right as I'm not a legal eagle. It would seem that a manufacturer creating a catchy brand name would want to file for trademark before making that brand public. But that's just my thinking and may be wrong.

I think that use is required so you don't end up with "trademark squatting." Otherwise, you'd have people (especially large corporations with the money to spend) registering everything they could think of and sitting on it either to prevent use or to sell the trademark.

I did post in a different thread yesterday a quote from a US govt site that states you may not use the trademark symbols unless you have the trademark already registered.

I don't think it's a good idea to claim trademark by using the symbols if a trademark doesn't exist. It makes a false statement.

You can't use the registered trademark symbol if it is not registered. You can use the ™ symbol if you are claiming it as a trademark, as, if you are using it in commerce, it is a trademark--it is the mark identifying you or your company.

Of course, you should do due diligence before using a mark too.

The ™ is kind of like staking your claim. It doesn't say that you have full legal rights to it, but it says that you are claiming it as your own. Kind of like planting a flag and filing the paperwork when you get back to civilization.

Disclaimer: I'm not a lawyer, so for the most accurate information, you should contact a trademark attorney.

[lewnytewny]

Thanks very much - this is helpful!

[lewnytewny]

Thank you very much I will document everything and go ahead with the social networking. THANKS!

[BrianMcLeod]

Originally Posted by Kay King

I did post in a different thread yesterday a quote from a US govt site that states you may not use the trademark symbols unless you have the trademark already registered.

kay

Hi Kay,

You can't use the REGISTERED trademark symbol ® unless you've registered the mark with the Patent & Trademark Office.

However, you absolutely can use the TM trademark symbol ™ in order to make CLAIM to a mark before you've registered it.

That's what the ™ mark IS, it's you claiming, "Hey world, this is MY trademark"

The circled R indicates, "Hey world, this trademark is registered".

Make sense?

Best,

Brian

[Killer Joe]

LT,

Something else to consider, and I'm just throwing this out due to a recent experiece with this, is to not only look at who has similar trademarks, but also who has products or services that may be confused with yours.

None of this may apply to your situation, but the ability to brand your name without confussion is a valuable asset. I recently built a 60+ page website for an offline client and I had to be the one to inform him that someone was already using his chosen product name on the internet.

He went through all the steps he thought were required to check out the name he had given his new product line...Trademark searches, looking through State and County records, etc., but it never occurred to him that someone else already had a lock on that name on the internet. He's in the US, and the competing company is in Canada.

Ironically, when he typed the name of his product into the search engines very little came up to clue him into the fact that the name was already being used on the internet. But when I explained to him that our marketing efforts will bring a lot of exposure to the brand name, and that all he will be doing is giving a windfall to the competing products' website he understood that he needed to change the name of his product line.

This turned out to a huge undertaking as everything was already prototyped using the conflicting name. When I explained to him that he should have typed his proposed name into the address bar and put a .com in back of it he said he did and *nothing* worthwhile came up.

Well, what he was seeing was a parked page that he didn't recognize as belonging to someone who already was using that brand name in commerce. It's helpfull to know that not every company wants the customer service overhead that having a website entails, especially distributors.

Bottom line...always take your due diligence one or two steps beyond the point where you feel comfortable with the results. It can pay off huge when you uncover something that may cause confussion later down the road.

I'm sorry if this post seems a little of topic, but after just going through this fiasco with this client I thought this additional perspective may have some value to this conversation.

Much success,

KJ

[lewnytewny]

Fortunately, the concept that is being worked on here starts off as an acronym and is original in concept. Thanks to everyone that has posted in this thread! THE WARRIOR FORUM ROCKS!

[jacktackett]

LT, you should also consider registering in your state as well. There are federal AND state registrations to consider, though most folks just think about the US Federal Government. Your secretary of state's website should have information for you to review.
best,
--Jack

[tj]

Originally Posted by jacktackett

LT, you should also consider registering in your state as well. There are federal AND state registrations to consider, though most folks just think about the US Federal Government. Your secretary of state's website should have information for you to review.
best,
--Jack

You should check the US state's registrations for pre-existing trademarks too - but you do not need to register with the state - the federal registration does the job of protecting your trademark US wide.

Timo

[Kay King]

Brian -

Thanks - that clears it up a bit.

When I see marketers asking about this they seem to be using the tm and r (too lazy to do them right tonight) as interchangeable and I knew you could not use the R for "registered" if you did not have the name properly registered.

kay