+ Reply to Thread
Results 1 to 9 of 9

Thread: How about discussing on "trademark" issue?

  1. #1
    New Member
    Join Date
    Oct 2012
    Posts
    15
    Thanks
    5
    Thanked 1 Time in 1 Post
    Rep Power
    4

    Question How about discussing on "trademark" issue?

    There is a domain name I registered about a year ago and I believed that it would not be subject to trademark infringement. But now, it's become more confusing and I'm not so sure if I avoided trademark violation or I didn't.

    Well, the domain name is "eTradeOffice" dot com and the first part of it is confusing. Actually, the term e-trading is used to describe the electronic transmission of business documents (such as orders, invoices and dispatch notes) between trading partners, using appropriate document information exchange standards. Besides, the term "etrade" is used for international trade on the internet.


    I'm wondering if I do have my right to keep it and use it.


    So, how about discussing that?

    Cheers!

  2. #2
    Dormant Account
    Join Date
    Feb 2012
    Posts
    100
    Blog Entries
    1
    Thanks
    52
    Thanked 91 Times in 50 Posts
    Rep Power
    7
    The issue would be whether or not you are trying to piggyback off of the E*TRADE brand. For example, if it's an information site on how to use the E*TRADE platform, then they could come after you at any time. It doesn't sound like you'd be doing that, so they could only come after you for trademark dilution, which is improbable / harder to prove.

  3. The Following 2 Users Say Thank You to gzed For This Useful Post:

    auctioneer (4 November 2012), Chabrenas (3 November 2012)

  4. #3
    New Member
    Join Date
    Oct 2012
    Posts
    15
    Thanks
    5
    Thanked 1 Time in 1 Post
    Rep Power
    4
    Quote Originally Posted by gzed View Post
    It doesn't sound like you'd be doing that, so they could only come after you for trademark dilution, which is improbable / harder to prove.
    Yes, you're right I'm not doing that, that domain name is specifically based on the second definition of the "e-trading" which is explained on the dictionary. Thanks for the comment, Gzed. Could any other EPs' help me to get it clear in mind? Cheers!

  5. #4
    Junior Member
    Join Date
    Oct 2012
    Posts
    34
    Thanks
    7
    Thanked 18 Times in 10 Posts
    Rep Power
    4
    US Trademark law requires that you are causing confusion by a trademark holder. It does NOT look like you are doing that. Also, Trademark law REQUIRES the trademark holder to be vigilant. That is, unlike Copyright and to some extent Patent law, Trademark REQUIRES the trademark holder to look for, and enforce his/her rights OR they loose them. As such, if you have a domain name and it is in use for a year, your rights begin to get stronger. After three years, the Trademark holder loosing a bunch of remedies.

    HOWEVER, domain name laws are looser than BRAND Trademark. So ... it might be a good idea to watch out.

    Looking at eTradeOffice, it looks OK. Let's check TESS (the trademark data base ...) http://tess2.uspto.gov/bin/gate.exe?...007:h4rd12.1.1

    I did a BASIC search for LIVE Trademarks ...
    No TESS records were found to match the criteria of your query.

    Next I did a LIVE/DEAD Trademark search ...
    No TESS records were found to match the criteria of your query.

    Hey! You're all clear. At this point you want to copy this post and keep it (dated) for your records to show you did a search and NO trademark was found.

    This is NOT an exhaustive search, but no exact matches. e*Trade might be the closest, how similar are your business?

  6. The Following 3 Users Say Thank You to EricTheRed For This Useful Post:

    auctioneer (4 November 2012), Chabrenas (3 November 2012), Clinton (6 November 2012)

  7. #5
    New Member
    Join Date
    Oct 2012
    Posts
    15
    Thanks
    5
    Thanked 1 Time in 1 Post
    Rep Power
    4
    Quote Originally Posted by EricTheRed View Post
    This is NOT an exhaustive search, but no exact matches. e*Trade might be the closest, how similar are your business?
    Services which provided by eTrade Office, are like these;
    business research and consulting; focusing on international trade; offering professional services to new exporters make their first export sale, as well as existing exporters; offering dealership and distributorship to both foreign companies and local ones conduct international trade and so on..

    So, eTrade Office's business is 99,9% different from E*Trade's.

    For sure, there's nothing left to worry about, right?

  8. #6
    Junior Member
    Join Date
    Oct 2012
    Posts
    34
    Thanks
    7
    Thanked 18 Times in 10 Posts
    Rep Power
    4
    No. Here is how the law works in the US. Someone can ALWAYS sue you. ... but they may not win. However, ICAN (think I spelled that right) often takes action with respect to domain names. Normally the issue with Trademarks is Likelihood of Confusion. That meaningless phrase works like this:

    If E*Trade wants to be a *****, they will send you a DEMAND LETTER. Telling you the eWhatever.com is likely to cause confusion. And demand that you surrender the domain (or stop using it) immediately. In which case you hire an attorney for about $400 to send them a letter to kiss-off.

    That lawyer will likely review your site and see how strong their case is.

    99% of all Trademark, "demand" letters NEVER GO TO TRIAL. Why, because trademark law is weird. If e*Trade sends you a letter, they can say they defended their trademark. So the scary letter is often just for show. Once you have a lawyer, that often ends things ...

    But let's go back to TESS. Here is their listing:
    Typed Drawing

    Word Mark ETRADE.COM
    Goods and Services IC 036. US 100 101 102. G & S: Financial services, namely stock brokerage services, investment brokerage services, brokerage and dealer services in mutual funds, and providing information in the fields of investment and finance over computer networks and global communication networks. FIRST USE: 19981200. FIRST USE IN COMMERCE: 19981200
    Mark Drawing Code (1) TYPED DRAWING
    Serial Number 75783594
    Filing Date August 23, 1999
    Current Basis 1A
    Original Filing Basis 1B
    Published for Opposition March 12, 2002
    Registration Number 2574989
    Registration Date June 4, 2002
    Owner (REGISTRANT) E*TRADE Securities, Inc. CORPORATION CALIFORNIA 4500 Bohannon Drive Menlo Park CALIFORNIA 94025(LAST LISTED OWNER) E*TRADE FINANCIAL CORPORATION CORPORATION DELAWARE 1271 Avenue of the Americas New York NEW YORK 10020
    Assignment Recorded ASSIGNMENT RECORDED
    Attorney of Record Harold Milstein
    Prior Registrations 1985826
    Type of Mark SERVICE MARK
    Register PRINCIPAL-2(F)
    Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20120517.
    Renewal 1ST RENEWAL 20120517
    Live/Dead Indicator LIVE

    In the worse case, they could say the names are similar. However, you both offer different services. As long as e-trade is a word in it's own right, using it as part of your domain might be OK. eTrade vs eTradeOffice ... can you see how this might cause confusion. So, I think their is a risk. But what happens on the site is also a factor. I might have a disclaimer that states that their is no connection to eTrade.

    Normally I think it would be OK, but domain names get dicey with respect to trademark laws. Once someone is on the site, if it is clear that you can't invest, that helps. Your best defense is time. The longer you can stay under their radar the better.

    If it was me, I'd see if I could get eTradingOffice. But, if they say nothing, great.

    My advice is to find a IP attorney, you do seem awfully close.

    - Eric

  9. The Following 2 Users Say Thank You to EricTheRed For This Useful Post:

    auctioneer (4 November 2012), Clinton (6 November 2012)

  10. #7
    Trial Member
    Join Date
    Jul 2013
    Posts
    3
    Thanks
    0
    Thanked 0 Times in 0 Posts
    Rep Power
    0
    If you're really serious about this then it's probably best to consult with a lawyer. However, from first glance in my eyes I would say this domain could definitely fit in as a trademark violation. Although the term "E-Trading" is pretty generic and probably can't be trademarked, 'ETrade' is much more specific and already is. The main question here would be..If your site has nothing to do with anything that the e-trade company offers (Stocks, Bonds, Options, Investments..etc) would it still be in violation of the trademark?

    If your site is all about websites and web hosting which is completely separate from what the trademark holder offers, there might not be any violation there.

  11. #8
    Trial Member
    Join Date
    Sep 2013
    Posts
    2
    Thanks
    0
    Thanked 5 Times in 1 Post
    Rep Power
    0
    Interesting: when connecting to the etradeoffice dot com website, the domain is for sale, and the sponsored ad displayed reads:

    Sponsored Listings
    E*TRADE - Official Site‎
    Trade Free for 60 Days. Powerful Tools & 24/7 Support. Sign up Now!

  12. #9
    New Member
    Join Date
    Oct 2012
    Posts
    15
    Thanks
    5
    Thanked 1 Time in 1 Post
    Rep Power
    4
    Quote Originally Posted by buysellbrowse View Post
    Interesting: when connecting to the etradeoffice dot com website, the domain is for sale, and the sponsored ad displayed reads:

    Sponsored Listings
    E*TRADE - Official Site‎
    Trade Free for 60 Days. Powerful Tools & 24/7 Support. Sign up Now!
    Thanks for replying. That domain name has been parked for a few weeks and that sponsored ad had placed on the page. But I didn't even notice that. Anyway, there is no parking page template which includes any related advertisement.

+ Reply to Thread

Similar Threads

  1. Replies: 1
    Last Post: 7 August 2012, 6:03 am
  2. 17-year-old creates "Nanosystem for the Treatment of Cancer" and wins 100k!
    By TheodoreK in forum Foo - everything off-topic
    Replies: 2
    Last Post: 13 December 2011, 5:33 pm
  3. "The Ultimate Traffic Generation Summit" event in London next week
    By kmander in forum General & Miscellaneous
    Replies: 7
    Last Post: 16 April 2011, 5:38 am

Bookmarks

Posting Permissions

  • You may not post new threads
  • You may not post replies
  • You may not post attachments
  • You may not edit your posts