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Trademark (and internet domain) question. I own an internet

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Trademark (and internet domain) question. I own an internet domain (since 1997) that I began using as a business name a couple of years ago. So far I have not put proprietary content up at the site; it just has a general 'referral' page. I got an offer to buy the domain from an outfit in UK whom I suspect wants to use the name in my line of business. I want to put them on notice that the name is XXXXX XXXXX 1) Is registration of the domain and a keyword referral page sufficient to establish TM rights? 2) Should I file an "intent to use" TM registration, until such time as I have proprietary content on the website? 3) Should I put the UK party on notice before or after either TM reg or web content, and is there a sentence that is a term of art for putting on notice? Many thanks.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 1 year ago.

Alex Reese :

hello

Alex Reese :

1) you need to be using the mark in commerce in connection with goods/services for TM rights to arise. Your reference to "proprietary content" is confusing to me, it has nothing to do with TM rights. 2) Intent to use is for when you are not using the mark in commerce but plan to do so within 6 months. 3) Once you are using the mark in commerce you could claim "common law" TM rights, and place the "TM" symbol next to the name. Registering the mark will give you greater/broader rights

Customer:

Hello. Thanks for your initial response. I have owned the domain and it has had a 'splash page.' However, one could imagine someone arguing that did not constitute use in commerce of actually offering the services (so different class of use argument). I have used the business name, but so far no out-of-state client, and so no hard proof to date. Finally, the 'proprietary content' comment was meant to indicate advertising the claimed services via a webpage advertising cross-state services. Since that might take weeks or months, it sounds like filing a provisional would give maximum protection. Or I could file on the same day I launch the branded site.

Alex Reese :

i see. at the time of filing the TM, you need to submit evidence of use in commerce, so if you don't have that you should go for an intent-to-use application if you will have the evidence within 6 months

Alex Reese :

as you suspected, a splash page may not be sufficient, what you really want is interstate sales/business

Customer:

ok, cool. i want to claim in several specific lines (e.g., software for related service as well as service itself) and the former may not be ready at launch, but will be within six months, so i think the intent-to-use is the way to go. Once the intent-to-use is filed, other parties can be "warned off"? Anything specific? what about the UK aspect: do I need to file in UK, if the website offers services to UK-based clients?

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