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CAN YOU LOSE YOUR MOST VALUABLE DOMAIN TO A COMPETITOR’S TM FILING? WE ANSWER ANDREW ALLEMANN

(This post is in response to DomainNameWire’s Andrew Allemann’s answer to my comments on his post referring to TM’s.

REFERENCE:

Andrew Allemann
January 29th, 2012 | 7:14 pm
@ Stephen Douglas -

“That’s not true. You can file a trademark anytime. You can even file an “intent to use” trademark before you even start using it in commerce.”

My response to Andrew is posted here:

@ Andrew,

My experience over the last 25 years is that the TM won’t be registered in your name until you’ve used it in commerce publicly, and within the geographic area of your TM visibility, until five years.

You can file with the USPTO all you want, but it doesn’t mean you have a TM on the name just because you “filed”, or will be given the TM for it. Many companies file for the TM thinking this will scare off competitors, but if they haven’t used the TM phrase publicly, they’re not going to get the TM issued to them.

However, promoting the phrase publicly with the “TM” mark is the first move you need to make to secure your timeline of usage of the TM phrsae in commerce. Like I said, I’m not an atty, but I’ve won three TM contests in the last 25 years using this process as advised by my atty back in the 80′s.

Also, don’t hesitate “challenging” usage of your TM phrase, because even six months of a competitor using the exact TM phrase, even your company name, is too long to wait to secure your rights to the name. That one I lost… the story is too unbelievable and long to tell here, but the judge’s ruling was basically this: “If you have a TM name being usurped, you need to file a C&D or lawsuit against them in a timely manner, so they don’t invest money and time in using the identical phrase. The defendant in this case has already invested significant amounts of money and has many respondents with their families who are now invested in the defendant’s use of the name of your company.  Six months of no legal action shows this court that complainant was not vigilant to protect their company’s name.”

Thus, another company was able to continue stealing our company’s name and identity, in my same space, copying my company’s name that had been in use for three years. They even lured a past winner of our shows to represent them… which we found out was done with a lot of cash. Everyone has their price, I guess.

Filing for a TM immediately isn’t going to get you the TM. You have to show usage. You have to fight other entities trying to get in on your “genre” using your domain name. Otherwise, cash heavy companies could find thousands of startup companies “defining phrases”, and simply buy out the TM listing from under those companies. That’s not how it works, thankfully.

Wonder what all domain atty’s we know would say about this. It’s a very important part of keeping your most valuable domains safe and secure, so all of you domain buyers who think you are safe from being reverse hijacked, think again. And if Andrew is right in his assertions, you all lose your domains to the companies with the most money to steal TM phrases by just paying for “filing”.

Tags: General Domain News