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Trademark challenge and forced surrender of domain name

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  • Trademark challenge and forced surrender of domain name

    Hi

    For some time now Iíve had plans to create online courses for a very popular software. Letís call it SALAD for the purposes of this post.

    Back in 2016 I registered TOTALSALAD.com and TOTALSALAD.co.uk to act as my websites for my courses and have kept the domains registered ever since. Life done its thing and in 2022 Iíve decided to finally make a move towards getting this stuff up and running.

    Worrying about someone else trademarking the name, I applied for the trademark of TOTALSALAD in various classes based around online education.

    On the final day of the time allowed to file an opposition, I receive notice of threatened opposition. Next follows a letter from solicitors from the software company itself claiming that the use of the word SALAD, which they have trademarked, would cause confusion, and may result in damage to their reputation and that they would like to resolve this amicably by instructing me to sign and return the letter agreeing to three terms.

    These terms included:
    > removal of my application for trademark of TOTALSALAD,
    > to not commence use of TOTALSALAD or any sign that uses SALAD, unless its for the purpose of identifying the software SALAD etc.
    > to not use any company name, trading name or domain name which includes the SALAD mark or any name or sign which is similar.

    I responded by explaining that my intention to trademark TOTALSALAD was purely to prevent anyone else doing so whilst I took the time to get skills up to date with the software. Therefore, I would be happy to remove my trademark application.

    I also cleared up any confusion by making it crystal clear that any reference with the word SALAD would be referring to the software as Iíd be training people how to use it / enhance their skills etc.
    I asked them to reconsider the third instruction to not use SALAD in a domain name as I have TOTALSALAD.com and .co.uk registered. I proceeded to list 9 other website that use SALAD in their domain name which are the same as mine in terms of provision of education services on the SALAD software itself. Some of these are so blatant such as SALAD-course.co.uk, weareSALAD.co.uk, onlineSALADtraining.co.uk, mrSALAD.com.

    Software company replied via their solicitors seemingly pleased that I would withdraw the trademark application and that they didnít intend to discourage my mission. But then decided not to permit me to use my websites. Instructions then increased to a list of six with five of them basically telling me to not use the registered domains, not to allow them to renew, not to pass/sell them to a third party and to let them expire without renewal.

    Theyíre basically choosing to not allow me to use TOTALSALAD in my domain name even though the websites hosted on these domains would only be serving to provide education on the use of the SALAD software and nothing else, hence the use of TOTAL before the word SALAD. And to force me to lose them when these domain names cost me around £3k to register as they were premium names. Yet they allow these other 9 domains to carry on even though they feature SALAD in their name and provide education on the SALAD software in a similar nature to what Iíd be doing.

    I donít dispute that they can fight my application and likely win in terms of trademarking. But can they really force me to surrender my domains even though several of similar name and purpose exist?

    They pointed me to a website which lists their guidelines for the use of their trademarks. They state ďAs you will see, the use of (SOFTWARE COMPANYíS) trade marks in the name of a business, as the name of a service or in a domain name is not acceptable.Ē The key section which refers to a domain name has an example where it blatantly sounds like the website is the Software company's. which i can see causes confusion. To make it sound similar to my example, its like SALADbowls.com. But my use of TOTAL before SALAD stands for Nothing but SALAD.

    TOTAL is not my company name and its not similar to SALAD in any way. It doesn't indicate anything other than a variation on Totally or Completely or Purely or Nothing but SALAD.

    Theyíre purposely choosing to allow several others to use SALAD in their domain name but not mine. If they can do that as trademark owners of SALAD then I guess this is an expensive lesson for me, but considering the others exist and theyíre choosing to prevent me from doing the same whilst allowing the others to continue to operate seems unfair.

    Any advice very much welcomed. If this would likely be a nightmare to fight then I'll surrender and think of a different name that doesn't include SALAD (looks like I'd be signing up to a lifetime ban on featuring SALAD in any domain i register!)
    Tags: None

  • #2
    Hiya

    Your post didn't publish initially as it was caught by our sometimes over-sensitive spam filter, so I've approved it.

    Comment


    • #3
      I am no trademark /intellectual property expert, but here are a couple of thoughts.

      1. Your use of the trademarked name (Salad in your example) shows that you are trading on that name.

      2. If you cannot afford a fight against an opponent with significantly greater resources, withdraw with dignity.

      3. This is a highly specialised area, and if you are considering contesting the claim, you should take specialist professional advice.
      Lawyer (solicitor) - retired from practice, now in academia. I do not advise by PM.

      Comment


      • #4
        Your defence is broadly that they do not universally enforce their rights. You do not know what other actions they are taking.

        The essence is that you are using the trade marked sign to tell people you are training on someone else's software.
        The domain name issues are governed by the two respective ragistration organisations, within their own rules. They differ as between .com and .co.uk names.

        As Atti says, this is an expensive and specialist area for disputes. You are not the first to be challenged in this way and will not be the last.

        Comment


        • #5
          NB they may be permtting others to use the name as part of a licensing arrangement. Have you enquired whether this is a possibility?
          Lawyer (solicitor) - retired from practice, now in academia. I do not advise by PM.

          Comment


          • #6
            Originally posted by dslippy View Post
            Your defence is broadly that they do not universally enforce their rights. You do not know what other actions they are taking.

            The essence is that you are using the trade marked sign to tell people you are training on someone else's software.
            The domain name issues are governed by the two respective ragistration organisations, within their own rules. They differ as between .com and .co.uk names.

            As Atti says, this is an expensive and specialist area for disputes. You are not the first to be challenged in this way and will not be the last.
            Just approved this as it was caught by the spam filter!

            Comment

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