The bane of many a startup and established company alike, trademark trolls now have their sights set on the auto industry.
Portage, Ind.-based Trademark King, Inc. began filing trademark protection claims on 155 names and domains around Thanksgiving of last year, AutoGuide reports. The claims include everything from “Selection Sunday” and “Warren Buffet,” to “Porsche.com” and “Kia.com.”
According to the filings, the trademark troll is staking its claim to these names for “brand development and evaluation services in the field of trademarks, trade names, and domain names,” as well as “creating trademarks for others.” For the right price, however, the company would sell or lease the name “to anyone in the world for a legal business activity.”
And how much did Douglas LeHockey, the owner of Trademark King – the company and the trademark – pay for this trouble? According to Domain Name Wire, $50,000.
When interviewed by the publication about another trademark filing related to an established domain name, LeHockey said it didn’t matter who had the domain name first, but who filed the trademark first, adding he would have his lawyer send a cease-and-desist to the domain owner.
So is anybody trolling “dead” brands?
Yeah, I thought this was an article about people using dead auto brands like Pontiac, Oldsmobile, Mercury, Packard, Hudson, Nash, etc to make money.
The Packard.com domain is a law firm!
Many of the logos of the Packard car company are owned by the Packard Motor Car Foundation or the Packard owners club. The Studebaker National Museum owns the rights to the Studebaker logos.
Surely those guys in TX who built the that Twelve a few years ago have some of them. They said the name was for sale on their website when I went there (when we were discussing the Twelve the other week).
Heh, reminds me a bit of the Nissan.com fiasco.
U can buy “Edsel” for $1.59. Saturn goes for twice the price of Uranus.
“Saturn goes for twice the price of Uranus.”
Must… resist… jokes…
From the US Patent and Trademark Office:
“You can establish rights in a mark based on use of the mark in commerce, without a registration.”
“Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.”
This guy is claiming that by registering example.com as a trademark, the Example people who have already used example.com in commerce have no right to that use just because they haven’t taken out federal registration of a trademark on the domain name. Seems to me that their prior use of the domain name in commerce makes a challenge to his registration simple. I’d be surprised if he’s actually been able to find an attorney to send out his bogus cease and desist letters.
I always admire trademarks and names which can make their way into standard lexicon use, and nobody thinks about it even being a brand.
Kleenex
Band-Aids
Duck Tape
Those brands became generic terms before Formica corp lost their trademark on “formica” for not suing every mom & pop kitchen cabinet shop who used the word.
From an intellectual property standpoint, you want your brand to establish a market but come just short of becoming a generic. Otherwise your brand is diluted, with your competitors benefiting.
That’s a good point.
The Formica HQ is about 6 minutes from where I live. I did’t even know it was a Cincinnati company until I drove down Glendale-Milford Road and saw all the colorful Formica flags along either side near their HQ.
Aspirin was Bayer’s brand name for their new painkiller acetylsalicylic acid back in 1897.
“Duck Tape”
I mean, there’s a brand of duct tape called “Duck Tape,” but in common parlance and common written form, it’s still ‘duct tape’ last I checked. I think its more of a matter of pronunciation where the two ‘t’s are merged into one: ‘ductape’
That dern unpleasant glottal stop.
But still, when the average consumer goes to the store and says “duktape,” don’t they end up buying the Duck Tape branded one?
Nope, they get Nashua :)
I’d be shocked if any court let, oh, “kia.com” stand as a trademark from a company with no connection to the Kia brand *while Kia was using kia.com as its domain name*.
One can put in a registration for any old thing, doesn’t mean the Feds will let it stand to even the most obvious challenge.
(From the USPTO’s FAQ: “Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.”
KIA – e.g. – will completely trounce these guys in court, since they have *been using the kia.com name in commerce* for years, and the other guy has never done so, and has no rights to do so.
I share Mr. Schreiber’s surprise that any lawyer would go along with this, especially against large multinationals and Warren Buffet; people with expertise, lawyers, and piles of money to fight a BS claim.)
They might not own the trademark, but they own the domain.
Uh, yeah… unlike the more-difficult-to-defend patent trolls, slapping this guy upside the noggin, should he actually find a lawyer to take his case, is pretty darn trivial. Meaning he just blew $50k for a combination of USPTO rejections and maybe some worthless trademarks he can’t actuallly use, on the off-chance some of the registrations are successful.
It’s a shame the USPTO doesn’t have a way that I know of to simply bar any future filings by this clown.
I know that the USPTO approves some silly stuff, but the chance they’ll actually approve an application for a trademark to some random a$$clown for porsche.com is pretty much zero, meaning that $350 filing fee is going down the drain.
That is a great photograph.
Fremont Troll, from Cameron’s (and my) hometown of Seattle. It sits under the Aurora Bridge, a very high bridge. It’s at the foot of a street that runs directly under the bridge and is called “Troll Avenue North.”
Thanks dal. It is a must-see for me when I find myself in Seattle. Very cool.
Right up the hill from the giant statue of Joe Stalin. Gotta love Fremont.
It’s Lenin actually, rescued from Slovakia in 1989. Right between the two sits a Cold War rocket mounted to a building. Gotta love Fremont, the center of the universe!
Of course I would make that mistake. A friend once called it Stalin, so I’ve started calling it Iron Joe as a joke.
Best part is, it has been for sale almost the entire time it has been in the US.
Yes, it’s perfect. Excellent choice.
Dude why am I not surprised. Apple just got a patent on the shape and feel of their watch…really
You mean that watch which doesn’t work properly for people who have tattoos on their watch-wearing areas?!
That’s either a good reason to, or not to get a tattoo. I’m just not sure yet.
Irrelevant.
*Design* patents are not the same thing as trademarks, or normal patents.
They’re not even really related, except that the USPTO handles both, in the US, and that they’re intellectual property.
This Idea of running interference on a name to gain a profit isn’t new. Harrods,the big department store in London sent lawyers around the western World in the 1980’s to tell anyone using the name Harrod,in their business to C&D. In my home country new Zealand, there is a small town which had a mens wear shop run by a family called Harrod. Guess what? the mighty reach and finances of Harrods of London attempted to get them to shut down. It was case of the mouse that roared and they defeated the lawyers of the owner of Harrods in the supreme Court. Such things should be seen for what they are , a symptom of greed,and nothing less.
He would have had better luck lighting the $50,000 on fire.
My experience went like this: “You’ve had no sales, that’s no commerce and no right. Get off my mark or I’ll waste your money and still get it.” Crazily enough, it worked.
Businesses tend to hate have to spend money on frivolous crap. I am really surprised that patent trolls and their ilk are not found dead in a ditch somewhere. It seems like poking a mega corporation with a sharp stick would be a bad idea.
The issue with the domain names has been through the courts many times and the courts have almost always ruled in favor of the established brand. That said:
“while use of a trademark as a domain name to extort money from the markholder or to prevent that markholder from using the domain name may be per se dilution, a legitimate competing use of the domain name is not. Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.”
This reminds me of the whole nissan.com debacle.
I remarked that also. That struggle has been ongoing for many years and most recently Nissan is trying to do something similar to what the guy in this article is doing, trying to capture the domain via trademark.
Domain registration however does not allow people to register a domain name that is the same as someone’s registered trademark. It is relatively easy for a trademark holder to notify the domain registration authority that their trademark is being used by someone who does not own the trademark and the domain holder is shut down. If the person tries to re-register the domain name they can be banned from ever getting any domain name.
In the USA you cannot sit on trademarks, you have to prove you are using the trademark. When I saw the title of the article I thought for sure it was going to be about China.