Legal Question in Technology Law in California

Re: Trademark dispute of a domain name

You probably should not rely heavily on the "Clue" case. Remember that the defendant in that case also had a trademark in the name.

You may be right that your word is sufficiently generic that there can be no trademark protection. Or you may be wrong. If you intend to fight a well-funded corporation for ownership of the name, plan on spending lots of money on attorneys' fees to find out if the word is entitled to trademark protection.

If you want real advice about how to proceed, call me at (415) 441-5544.

Re: Trademark dispute of a domain name

Most of your conceptions are at least close.

1. Yes, trademarks in dictionary words for unrelated businesses aren't easily obtained. But the CLUE game people DO have a trademark in that word, very clearly, and it would extend to anything related ... let's say you made a T-shirt with a detective and a magnifying glass on it and wrote "Get A Clue, Willya?" -- you could well be infringing their trademark. It's not a simple issue. There's something called "watering down" when others use a trademark in different contexts and thus give it less meaning (though it is hard to water down "clue" as a trademark, I admit).

2. Actually, you have oversimplified the CLUE game case and have in fact drawn an improper conclusion from that case. There were countervailing principles. Lawyers will tell you that you can't just look at the results; you need to look at the "holding" of the case, the principle of law enunciated on which the decision was based.

3. This threat, handled skillfully by a trained professional -- oh! a lawyer! -- is an invitation to negotiate; it is, I assume, part of the reason you reserved the domain names in the first place, and this may be your opportunity to cash in. However, you should know that having a lawyer negotiate for you also keeps a wall up so that they can't later claim that you got the domain name only to 'blackmail' them, so to speak, but if you ask them yourself for an offer, that becomes admissible evidence which would support your conclusion.

Therefore you should ask a lawyer to get involved at this point if you want to make money.

If you only want to defend your reserved domain name (by the way, did you pay for it!?), you might be able to wait until they actually file a suit before you hire an attorney. The problem with that is that the other side will have already invested more money in their attorney, and may even have been encouraged to do so by your apparent lying down. So even then it'd be

good for posturing to show that you're not scared

by having an attorney reply now and possibly scare them off.

What's the word!??!!?!?? I would think you wouldn't think twice about putting it in your message! (Please answer that in the first message

you send me. It could flavor the whole thing.)

Anyway, if some attorney near you answers, hire him.

If not, I can probably handle writing

them back a tough letter for a few hundred or starting a negotiation with them for a lower amount as retainer and then getting something on contingency for the rest of my fee.

Re: Trademark dispute of a domain name

The key question in your situation will likely be whether or not you or the objector have a registration for the mark. Dictionary entries for the name go more towards whether or not a trademark registration can be obtained. The fact that you have so many domain names will work against you in this conflict. Call me at 314-621-5070 or email me at [email protected] if you want solid advice to protect your position. I would need the specific word to advise you properly.