Legal Question in Intellectual Property in United Kingdom

Re: Domain name dispute

Firstly, the extension doesn't matter. If you indeed registered the trademark in the United States Patent and Trademark Office (NOT the Federal TM Assocaition), further registration of any extension is unimportant.

Please check that you registered it, but assuming you did, the issue is how are your rights affected by the foriegn domain name registration and possible use. There are many variables in that question...what are the two businesses involved? What do they market and for how long? Who made trademark use of the name in commerce first(mere domain name registration is not trademark use)? Is the foriegn company a registrant of the trademark itself or just a domain name? etc.

But first step, find out if you registered the trademark in the U.S. or not. Then let us know what the two companies do, and who was first to use the trademark in each country. Feel free to contat me if you have further questions about this much.

Re: Domain name dispute

This is a complicated scenario. First, trademarks may only be registered with the U.S. Patent & Trademark Office (USPTO). (Is the Federal Trademark Assoc. a company handling the registration for you?) Trademarks are jurisdictional: a registration in the U.S. is good only for the U.S. --- it does not extend protection to any other country. A U.K. domain registration of your mark with a ".com" extension does not affect your U.S. rights in any way. It is important for you to determine if the Federal Trademark Association has, indeed, submitted an application to the USPTO on your behalf.

This leads to the second question --- registerability. Unless your company's service is Internet related, you cannot register your domain name as a trademark; in other words, the ".com" must function as a service mark in order to become registered. The USPTO's Trademark Manual of Examining Procedures states, "If the proposed mark is used in a way that would be perceived as nothing more than an Internet address

where the applicant can be contacted, registration must be refused."

Thirdly --- your business abroad. If you are going to do business in Europe, you should consider filing a European Union trademark application. If approved, your trademark will be validly registered in all EU countries (Belgium, Denmark, Germany, Greece, Spain, France, Ireland, Italy, Luxembourg, the

Netherlands, Austria, Portugal, Finland, Sweden and the United Kingdom; candidate countries include Bulgaria, Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Romania, Slovenia, Slovakia, and Turkey.) The cost is approximately $1200 for up to 3 classes of goods (and valid for 10 years from the date of filing)-- a bargain considering that the EU will do the trademark searches in each EU country and one registration is good in so many countries. Even if the registrant of the ".com" extension of your business name has registered it as a trademark as well, you may still be in a position to register your mark if the goods and services you both deal in are sufficiently different so as not to cause confusion in the marketplace.)

One caveat as you enter business transactions abroad --- you should check with your CPA regarding how you will do business in Europe vis-a-vis international taxation. Registering a trademark or website in a foreign country could have tax implications for you.

If you have any questions or would like to discuss this matter further, I will be happy to assist you.