Tactful Trademark Defense: An Example | Hacker News Reader

Tactful Trademark Defense: An Example

tech.wordnik.com

69 pointswillf18 comments

This is why you should be in control of your response to these things with your lawyers advice to guide you. If you just "leave that stuff up to the lawyers" without ever doing any kind of oversight, even the good ones who aren't 'make-working' billable hours are likely to embarras you with uncalled for nasty grams-sooner or later.

The outcome is great, but what happens when a small company sends out a friendly email like that without lawyers and things don't do so well? Has the company screwed themselves or will they just be back at square one when they have to involve the lawyers?

I'm not a lawyer, but I think you're just back at square one — or perhaps a little ahead, given the good will involved. Of course, you've lost a little time, too.

From experience, the other guys just go dark on you. I got a threat of libel from the companies attorney in response to my initial cease and desist. I rebutted the claim with them, but never heard back. After talking to about 10 attorneys, the estimate for fighting it in court is about $80K. Another option is to file for invalidation with the USPTO, which can be done without an attorney. Here's the whole story if you are interested: http://www.geekceo.com/entry/zoto-trademark

Wow, great write-up and sorry you've had to/are still going through this.

"but what happens"

The fear here (which isn't really detailed in the post because the OP has some experience in this area) is always going to be that you will say the wrong thing and somehow disadvantage yourself. If the respondent goes along and is willing to cooperate that won't happen. But if they don't there may be some nuggets in whatever you say that will come back to haunt you (just like talking to the police w/o an attorney might).

How early is too-early to file and receive a trademark? Is a landing-page with a "coming soon" message sufficient, or do you need to have active customers / users to get an approval?

You can file as 1b intent to use. Or simply design a logo as used in printed stationery (or on a website page) and submit that. We've done both and have been successful in getting trademarks approved.

Cool. Do you happen to know what constitutes actual "use" in the eyes of the trademark office when it comes to a website?

Content? User accounts? For a private site behind a login screen, how would they even know whether the service your trademark is being registered for even does what you say?

First, in general it is cheaper and quicker to file as actually using the trademark (1a). We've gotten trademarks with as little as a search page and a logo, literally, created with a cheap logo maker.

So if you file 1b (intent) that is fine but then you have to pay a fee and do another filing (iirc $100 more) when you finally use the trademark. And wait for approval. So if you can start to use it (in the class you have filed in) right away that is the cheaper route. Generally this is stuff that lawyers have little benefit in telling you since they get extra money for doing the extra work for you. And of course it is probably more ritualistically or legally correct. But if you are going to be lean you will have to cut corners and take some nominal chances. Important point.

Or operate the site that they see at something like

joeblow.mydomain.com instead of "www.mydomain.com". And give them that address.

Or simply give them screen shots actually even easier and say it's pw protected and only open to selected users.

There is stuff to know, not a big deal, but hard to summarize in a HN reply.

We got a trademark by putting up a site which literally was created by putting a logo on a customink.com shirt, screen grabbing, submit that to the trademark office and say that was the product. This is not a patent. It's a trademark for a logo or for words, right? All you have to do is show you are using it. In general.

Are you sure? I thought trademark protection was limited by field. So if you intended to create a clock called TeaTime, and you got a trademark on "TeaTime" as a t-shirt slogan, that wouldn't stop another company from getting a trademark for its TeaTime clock, because clocks are not normally competitors to t-shirts. Am I mistaken here?

curious: can entity B file an application after entity A for the same Standard Character Mark? Or does the USPTO only evaluate applications one at a time? Let's assume the time differential is a two weeks.

Quick answer: Goes by class of goods and services. So you can't have a filing for (in simplistic terms) "the same thing". You can file at any time though for something different.

It varies from country to country.

Trademarks can be a bet-the-business problem. Best to see a trademark lawyer. Shop around, there are lots. I prefer small law firms as you have a better chance of getting personal attention from a principal.

If only it were this simple with every case. What if you applied for a trademark sometime ago, but haven't released your product yet and someone comes along and releases a product with your trademark (unintentional of course)and becomes fairly successful ? I am not debating the article. Just wondering what would be the most ethical thing to do.

Very very cool - see how nice the world is when we don't get lawyers involved?

Lawyers are an essential component of society.

However the law is, as my favourite legal blogger says, "a broadsword, not a scalpel".

"Lawyers are an essential component of society."

Well obviously not in this instance.

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