My Domain vs. Trademark

Macky

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Recently I was contacted by a trademark registration lawyer agency from the USA that allegedly someone wants to register a trademark for my website name including .com. The lawyer says since my name is not registered in USPTO and I dont claim my website name as a trademark asap, his agency will proceed with another applicant and he can have it. What the consequences could be for my business ? What would you advise me to do now ?

My european registered limited liability company has owned and operated the site in a good faith for many many years....

Btw it is a content affiliate site sitting on .com domain that has no clients from the USA, not affiliated with US based businesses and hosted in Asia. Content is in english language of course.
 
I'm not remotely knowledgable about any of this, but I've seen discussion about it. Whether or not someone in the USA could register a trademark for your entire domain name plus the extension, I don't know. But I know it won't do them any good since they won't have your domain. And there's laws in place for this kind of thing, otherwise you'd see people flat out stealing people's domain names all the time, out from under them with the strong arm of the law.

Check out Nissan Motors v. Nissan Computer. You can find more info about the case in general beyond that. But basically you can't decide to name your business exactly what someone else's domain is (which is already in existence and has been in use) and then force them to give it to you.

You'll have a hard time even doing the opposite, where you register the domains of an existing company in an attempt to sell them to the company at a high fee. It happens because the price may lower than the cost to go to court over it, but domain squatting is said to be "abusive" internationally under the WIPO (World Intellectual Property Organization). Check out the section there about "In the United States of America" too, regarding Anticybersquatting and what it entails.

Realistically though, you just got a spam email from a real trademark lawyer trying to make money off of foreign clients using scare tactics.
 
Macky said:
The lawyer says since my name is not registered in USPTO and I dont claim my website name as a trademark asap, his agency will proceed with another applicant and he can have it
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It sounds like a nasty form of biz dev from a shitty lawyer...

He's basically saying he has a client who is going to register a trademark with your domain name... unless you register it first... which he will help you do for a fee.

[Borat Voice] "I have horse. It's very nice. My neighbor, he buy for good price. But if you want, I give you special discount. Because I like you."

If it were me, I'd ignore. If he caught me on a bad day, I'd tell him to get fucked.

No this isn't legal advice, but it is good life advice.
 
wow many thanks guys for your honest answers!

According to the answer i got from ChatGPT it is not so easy to take over the domain of someone else (or even charge the original domain owner with some nasty license fees) by simply registering their domain as a trademark. Of course as long as it is not domain squatting etc.

Anyway will keep you posted!
 
IMNAL (I'm not a lawyer) and more importantly I'm not your lawyer.

That said, AFAIK a Trademark is always specific to a product or industry. You can register foobar as a trademark for bicycles as well as for a cafe or bakery.

Hence if a person emails you pretending to be a lawyer and talking about a trademark w/o any specifics, they try to scam you. Ignore it!

Let us know if anything comes of it. I'd be curious how they actually want to make money from you? Maybe they want you to use their trademark registration service to register your domain as a trademark.

You can actually claim your name as a trademark w/o registering (AFAIK). Just add "(TM)" to the name where you use it (header Footer, etc.

P.S.: If they try to register it for the kind of business your website engages in (which I don't know to determine for an affiliate site, because I'm not sure if your mark is associated with the kinds of products you promote or if it considered a publishing mark), AND try to enforce it (take away your domain), you can defend yourself with owning the mark already longer, so their registration is invalid because it already was used regularly by someone else in the industry. But that can be costly in terms of lawyer fees.
 
Ryuzaki said:
I'm not remotely knowledgable about any of this, but I've seen discussion about it. Whether or not someone in the USA could register a trademark for your entire domain name plus the extension, I don't know. But I know it won't do them any good since they won't have your domain. And there's laws in place for this kind of thing, otherwise you'd see people flat out stealing people's domain names all the time, out from under them with the strong arm of the law.

Check out Nissan Motors v. Nissan Computer. You can find more info about the case in general beyond that. But basically you can't decide to name your business exactly what someone else's domain is (which is already in existence and has been in use) and then force them to give it to you.

You'll have a hard time even doing the opposite, where you register the domains of an existing company in an attempt to sell them to the company at a high fee. It happens because the price may lower than the cost to go to court over it, but domain squatting is said to be "abusive" internationally under the WIPO (World Intellectual Property Organization). Check out the section there about "In the United States of America" too, regarding Anticybersquatting and what it entails.

Realistically though, you just got a spam email from a real trademark lawyer trying to make money off of foreign clients using scare tactics.
Click to expand...

Absolutely fascinating case! I didn't even know about it.

You guys need to actually ready through the final opinion to figure out how exactly the judges ruled (the intentions and nuances)... but from a quick glance it seems that they sided with Nissan Computers mostly, letting them keep their domain name.

However, Nissan Computers were BARRED from using any automobile advertising on the domain to link to their motor component of their biz. They were multi-biz and did do automobiles as well. They were also BARRED from making disparaging remarks or any attempts to confuse with NISSAN MOTORS.

If you want to take a shortcut in reading the book length opinion, I would just send them the link and make the alleged attorney read it and see how they respond. Send an email with... "Not according Nissan Motors v. Nissan Computer"
 
Ok guys so today I received FINAL NOTICE email so I quickly went to the REDDIT Trademark subreddit and quickly found out that it is a scam and more and more website owners keep getting this.

Lawyers keep changing their domain name frequently, right now they TrademarkMega.com or TrademarkBlink.com but I think they will change it again in near future, as more and more people report them.

This is the link to subreddit I hope I am allowed to post it here ?

https://www.reddit.com/r/TRADEMARK/..._a_scam_or_legitimate_and_should_i/?rdt=49952
 
Guys no one serious sends threats through emails. They send official certified letter through the post office or have you served by a person to confirm you got the court papers. That's needed to show you got the notification and can't play ignorance.

Same thing with phone calls - no serious situation is going to come threatening you through a phone call. 99.99% of the time if someone is calling or emailing you out of the blue demanding this or that, it's an attempt to scare you to submitting, usually because of your lack of knowledge or ignorance in the matter. This is why most scammers prey on older people - cause new technology makes it easier to fool them.

Imagine 5 years from now - "someone sent me a threat through TikTok..." - give me a break. What's the difference between TikTok message and email? How can they confirm who got it?

If the police or marshals aren't showing up at your home it's most likely some bullshit - especially if you know you did nothing wrong and are just minding your own business.
 
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