
Tactful Trademark Defense: An Example - willf
http://tech.wordnik.com/tactful-trademark-defense-an-example/
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noonespecial
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.

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varikin
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?

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kordless
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>

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

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uptown
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?

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larrys
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.

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uptown
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?

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larrys
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.

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chc
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?

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prteja11
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.

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

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jacques_chester
Lawyers are an essential component of society.

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

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piqufoh
"Lawyers are an essential component of society."

Well obviously not in this instance.

