Equiiano,

This is in no way to be considered legal advise but... my understanding of how it works is even if you have not registered the name anywhere else but as a website that is enough to be considered as "doing business as" name which can be applied to a trade name.

For example, where I live you can register a numbered company and then you can list trade names... "doing business as"

AB2349839483779850348 ltd.
Operating XYZ Global
Operating 123 Acme

But it also works that if AB2349839483779850348 ltd registers a domain name then even without registering that name as one of your trade names you can legally be called doing business as with that domain name.

AB2349839483779850348 ltd
Operating exampleAcme.com

If I register exampleAcme.com in 2002 and AcmeExamples registers as a Trade Name in 2007 then I *should* be awarded the name as I used it first and was operating it in good faith not knowing AcmeExamples would come up in the future and result in a dispute.

I would write them back and tell them they are violating your trade name, send them the info about the date you started operating the site as well as the date you registered the domain name. And ask them to turn over any domains you think is infringing on your site. Make sure you point out that you have "prior art" rights to the name.

- Are American trademarks automatically enforceable worldwide?
Not everywhere in the world but some countries play nice in this area.

- Is my prior use of the Acme before its trademark relevant to the matter?
It is more then relevant, it is the deciding factor that will favor you, even in the USA and it is called "prior art"

What is "prior art"?

Prior art is defined by statute (35. U.S.C. 102), but it may generally be thought of as anything that prior workers in the field have made or disclosed in the past. Prior art may include printed publications, conference handouts (and sometimes even presentations within a university), books, newspaper articles - often regardless of where the material was published, where it was published, and in what language it was published. Prior art may also include orally presented material, such as discussions at conferences, disclosures to competitors, certain disclosures to colleagues in a field, and other public statements.

A website in my experience fully qualifies as prior art.

Demaestro,

Thanks for your points. I should have been more specific and said I was in the UK. The Prior art information is very useful and I will research a bit more on this.

Many Thanks.

No problem, just keep in mind UK plays nice with USA law but since the complainant is in the USA I would use USA law against him.

Do note that prior art rules state

"regardless of where the material was published, where it was published, and in what language it was published"

So I think you are ok even if you are publishing in the UK.

[webmasterworld.com...]

There is also this thread where some other senior members touch on how prior art will win out over a trademark everytime.

Check the 3rd & Last Posts

Also you can use the wayback machine to compile evidence of your site predating their trademark.

Demaesto,

Thanks for all your help. Unfortunately having visited the US Patents Office website I have since found that the actual registration date was 2000 which predates my use of the domains.

If the trademark is enforceable in the UK it looks like I might have a big problem as these websites form a principal part of my income. :-(

other senior members touch on how prior art will win out over a trademark every time.

This may be true, but the cost of actually fighting it out to prove the case may not be worth it. I have a client right that is in a dispute with a large national company. Their lawyer told them they would probably win in court for a variety of reasons, but also explained it would be thousands and thousands of dollars to get to that point.

I might have a big problem as these websites form a principal part of my income.

Sounds like material a sympathetic jury would love. Perhaps you could work out a settlement with them that would allow you to sell them the domains or operate it in a way that they might accept. In any case I would go talk to a trademark lawyer (probably a couple of them) in the UK before I simply folded my hand. It can't hurt and you might discover you have a better position than you think.

"Prior art" relates to patents and has nothing to do with trademarks. The trademark date that is important is the date first used in commerce.

I'm pretty sure it depends on whether they have procured a federal or international trademark. From the USPTO FAQ: [uspto.gov]

Is a federal registration valid outside the United States?

No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the he International Bureau of the World Property Intellectual Organization, through the USPTO. For more information about the Madrid Protocol, see TMEP Chapter 1900.

But as mentioned, in any case, if you can demonstrate first use in commerce they may have woken a sleeping dog, you can contest their mark.

Their lawyer told them they would probably win in court for a variety of reasons, but also explained it would be thousands and thousands of dollars to get to that point.

That sounds like a highly unethical thing to say if not bordering on blackmail. I am not sure a lawyer can say that to you.

Imagine a prosecuting district attorney says to an alleged defendant.

"Well we know you are in the right but it is going to cost you a lot of money to prove that in court... why don't you give me what I want and we can avoid all this."

I am pretty sure he would lose his job and I don't see any difference here... sounds like an abuse of the system to me.

Courts aren't set up a a tool to threaten people with. You are supposed to go to court when you think you are in the right and have been wronged... in this case he is saying, you are in the right but we will go to court to cost you money... that can't be right or legal.

[edited by: Demaestro at 3:52 pm (utc) on Sep. 16, 2008]

Demaestro, I think you are missing something here. You can't compare a prosecutor threatening a defendant to the attorney someone has hired telling his client that he could win his case but it would be expensive. That's actually very ethical advice, because if his client takes him up on it, the attorney would then not earn those fees. Maybe you thought that that was the lawyer on the other side who said that?

That sounds like a highly unethical thing to say if not bordering on blackmail. I am not sure a lawyer can say that to you.

Very idealistic, but not very realistic. I have been in a few court battles and in the end I really wish my attorney had told me before we got started about the headache it would cost me to keep fighting. I would have gladly tried to offer up some settlement options in the beginning instead of going to war. War is very expensive.

In the case I cited above I was referring to my client and the attorney they personally hired to help them with the case. He was doing what they paid him for, to give them the best advice he could, which in this case was to walk away instead of getting into a bash fest with the other side and racking up thousands in legal fees.

Years ago my attorney gave me general legal advice where he told me that the cost of fighting a case out to the bitter end against an entrenched and determined opponent was almost never worth it in the end. He said it was almost always better to settle in an amicable way before each side spent zillions on attorney's fees. I believe him now.

I have a two websites with a url of the form www alphaAcme com and www BetaAcme com and I am based in Europe

I recently recieved a cease and desist letter from an American company saying they have trademarked Acme.com and are using it for the same business as I use my websites, and my websites are a breach of their trademark. The evidence of their trade mark from the US trade mark office suggested they got in 2007, but I have been using at least one of those websites since 2003.

Do they have a case

- Are American trademarks automatically enforceable worldwide?
- Is my prior use of the Acme before its trademark relevant to the matter?

Any advice gratefully recieved

Equiano, you do not actually give enough info to inform an answer. What is pertinent to this matter is whether or not you are operating in the United States, regardless of where you are based.

Note firstly that in both the EU and the USA, a trademark is present the moment you start using it. It does not have to be registered. If you are actively using it, you can claim it as a trademark (and you can label it with the ™ symbol). Registration just gives you better practical protection, both because it provides an easily proven priority, and the ability to scare people with the ® symbol. :)

If:
1) You are trading in the USA (selling into or marketing to that market) using a term which conflicts with their trademark, and
2) They have precedence over the trademark, either by establishment or registration,

Then:
- you are on thin ice and your next stop is a US IP attorney.

You must have used ("established") the trademark in the jurisdiction in order to have priority on it. You may have been using the websites since years earlier, but unless that involved active trading in the USA, it doesn't matter - their registered mark would probably be valid for the USA.

If you are NOT marketing or selling into the USA market, then you are not infringing their trademark even if they have prior rights to it. Their registered USA trademark only provides protection for them within the USA. That is NOT to say that they may not have established or registered TMs elsewhere, but from your post they appear to only mention the USA?

With a website a court may decide that you are in fact "selling" into the USA market even if you are not, just because the site is accessible to USA residents. I'm not sure there is much in the way of law or precedent case history to speak to this. I doubt an EU court would sympathize with this view if they believe that you are not in fact trading, and of course any action against you must be in the EU. Nonetheless, if you are honestly not selling into the USA market but you are worried about the trademark situation, in this case you might want to appease them by working out a way to reject USA visitors, even "license" your site to them for USA vistors... redirect to their site? Charge them for it!

Nb. "trade mark" - above it is assumed that we are talking about word marks. A graphical logo or something is protected by copyright as well as trademarks, which is much more conservative worldwide. Trade marks are of narrow scope, take a bit to "establish", and even registered marks can become invalid if they are not used and kept current in the marketplace.