Trademark violation when Print and Web collide?

The Federal Trademark carries a lot of weight. You don't have it.

Merely owning a domain name registration does NOT create any trademark rights in the word string the makes up that domain name. To create trademark rights in that word string it must be publicly and commercially used to brand a product or service. It is NOT sufficient to simply publish a website at that domain address. Your own trademark attorney wil have to evaluate if you've developed any trademark rights in the word strings making up the domain names. If not, that attorney will likely discuss with you that if the "large newspaper organization" has, in fact, created trademark rights in those word strings [or any substantially similar] then it may file an Anticybersquatting Protection Act ["ACPA"] lawsuit against you in an effort to persuade a court to order those domain name registrations transferred from you to that company [with NO compensation to you]. The company cannot use the UDRP process to do so because [it appears] you did not register the domain names in bad faith -- that is, before the company's trademark rights were created. HOWEVER, the ACPA does not require you to have registered the domain names in bad faith. It only requires that you're now using them in bad faith -- which may be true if you now publish a website at those domain names or if you now offer to sell them to the company [or other conduct]. Speak with your own trademark attorney before you do anything. Good luck.

Unfortunately, you may have a difficult situation. A federal trademark registration gives its owner a presumption of exclusive rights to a mark across the entire U.S., meaning the newspaper organization may be able to more effectively argue ownership in the domain names in the U.S. as federal trademark registrations. If you substantially used the domain name(s) as marks, you may qualify for certain rights (known as common law trademark rights), but this may be difficult to establish, especially if the newspaper organization seeks to have the domains transferred to them through a Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration action, which often favors registered trademark owners over common law mark owners. Further, your chances to assert rights over the domains as marks may be even more difficult if the newspaper's marks have widespread consumer recognition. To further evaluate these issues, and ways to protect yourself moving forward, you should consider working with a qualified Washington state intellectual property attorney. Good luck!

It is not just using the name as opposed to cybersquatting that defines your rights. It must be connected to a good or service in commerce, and by failing to register, your "market" will be defined as narrowly as possible. You may have a good claim based on the facts, the correspondence with the newspaper, etc. but don't expect it to be easy and don't expect to prevail over a newspaper chain without the assistance of an attorney.

I suspect the situation is this.You have the upper hand legally and the paper has the upper hand strategically. That is because they have money and they appear to bewell represented and engaged in a well-planned program of attack to take these away from you. if you have prior rights raised on actual use, you actually legally should have the upper hand in this proceeding. However, since they obtained a registration and you did not oppose it and I timely manner, you would now have to cancel the registration in order to regain the momentum . That will not come cheaply and I doubt you have the money to sustain the battle. Accordingly, my view is that the newspaper is going to beat you in this conflict. Paragraph if you have the money to fight the newspaper and have the desire to spend that money in a battle that could be very expensive, then by all means contact a trademark infringement attorney who will assess your case and advise you further. On the other hand, if you read the writing on the wall as I do , you may very likely conclude that this is a battle you cannot afford to fight and that you will be best off trying to negotiate a purchase by the newspaper of your four websites, So you turn this whim-lose situation into a win-win situation where you make a profit from it. Just be sure that you use an attorney to negotiate that deal and that you get enough money to pay for your trouble. It may be, that as part of the strategy of a negotiation, your attorney petitions to cancel the newspaper's registrations. However, that really takes the gloves off and gets you in pretty deep into expensive administrative proceedings and possible litigation. Think long and hard before you let some litigation attorney talk to you into that. The attorney stands to make a lot of money but you stand to spend a lot of money. It appears the newspaper has committed itself to an expensive battle to get these domains away from you, so you need to carefully about how to best turn a profit from that situation. Don't let pride of ownership cloud your business judgment . If you can make more money by selling these domain names, that may be your best solution.

I agree with Bruce here, you seem like you may have the upper hand on the paper. First, you were the senior user from the facts you have presented. I do wonder why you didn't file an opposition to the paper's filing for federal registration, but that is a question for another time. Anyway, if the paper hasn't had the marks for 5 years yet, now is the time to challenge their registrations. Once 5 years has elapsed, you can bet they are going to file a Section 15 Incontestability and then likely come after you for using "their mark." Advice - Find a WA Trademark attorney and talk to them, as most of us offer free consultations. You shouldn't just sit and wait, as you will likely lose all potential recourse if you do. The fact that they approached you first, and THEN registered shows they knew you were using the mark. Don't want facts like to become irrelevant just because you didn't act on your intellectual property. Its time to act!

This sounds like a somewhat complex factual/legal history. I recommend you talk to a trademark attorney in private to get a reliable analysis of your options. Generally speaking, a party with federal trademark registrations has the upper hand in arguing that they own valid trademark rights. However, if you can provide solid evidence that you were using very similar marks for very similar goods/services *before* they began using their marks, you may have a strong case that you have prior common law trademark rights, and that their use constitutes infringement. That depends on a lot of factual determinations that should not be hashed out on , though. Moreover, in applying for these marks, the other side would have had to swear that they had the exclusive right to use the mark in question. If they did so knowing of your prior use/rights in the marks, that could make their registrations vulnerable to cancellation for fraud. That's not necessarily a slam dunk argument, but something to consider. I'd be happy to offer a free initial phone consultation to discuss options if you are interested. Good luck! Mike