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Guy tries to trademark one of Rick Schwartz’s domain names

This one will be interesting.

This morning I was perusing recently filed trademark applications when I came across an application for Trademarking.com.

When I checked the whois on the domain name, I saw that the domain was registered to domain name investor Rick Schwartz. But the company that filed the trademark was Trademark King in Indiana.

TrademarkKing.com (with two k’s) is registered under whois privacy, so I thought perhaps the trademark applicant owns this domain and the application was merely a typo. I picked up the phone and called the applicant to verify this was the case.

To my amazement, it’s not. The president of the applicant said he didn’t like how the domain name looked with two k’s, so he just used one. (He also filed a trademark application for “Trademark King”.)

When I explained that someone else owned the domain name Trademarking.com, he said he didn’t know that but that it doesn’t matter. He explained that he buys and sells trademarks, and if he trademarks it first, then it doesn’t matter who owns the domain name.

In fact, he said he’d have his lawyer demand that the domain name “be taken down”.

Please pass the popcorn.

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  1. Meyer

    More like a BlackEye. Which is better than a BrokenKneeCap*.

    He is definitely a stupid TMSquatter*.

    *not reg’d.

    Is it not ironic that Rick owns TrademarkSquatter?

  2. Jay

    This guy seems to be trying to fraudulently trademark a generic domain owned by somebody else and then use the fraudulently obtained trademark to try to intimidate and shakedown Rick Schwartz of all people to get the valuable generic domain trademarking.com for free.

    I predict this clueless person will become a poster boy at HallOfShame.com and that his trademark business will have no customers and that he will become a laughing stock.

    Hopefully Rick Schwartz humiliates this guy so thoroughly that similar special snowflakes learn that you don’t mess with domain investors.

  3. Nancy

    Whahoo…. I needed a good laugh this morning.

    I can just hear Rick saying to this idiot….Yippee-Ki-Yay…. *&%#$*

  4. Meyer

    A few years ago (7-8 yrs ago?), there was a young lawyer in Wash,DC (his day job was working for the gov’t) that reg’d prime words in biz, us and info. Then, he put up a site and apply for a TM on the word/words. He was hoping his $400. investment would eventually get him a prime .com domain using cease and desist letters and udrp. I think he quickly found out, that strategy would not work when combating professional domainers who used IP lawyers. He quickly disappeared.

  5. jennifer

    the domain communtiy need to come together and start pushing back against all of these ridiculious claims, collectively.

    Everyday it seems we are forced to read about this type of foolishness.
    and It’s always a different name but same story.

    If these idiots absolutely knew in EVERY SINGLE INSTANCE, they would
    be in a serious legal battle there likely would not be so many fraudent
    claims being made.

  6. Jamba Royt

    Just as Rick is always right when it comes to defending his names, he was also right when it comes to calling the gtlds a turd. They are the ultimate in pigeon sh*t.

  7. New gTLD Domains

    From the understanding of the report, one can conveniently say the trademark applicant is ignorant of the fact: *you can’t go trademarking a domain name that’s not yours*!

    Moreover, he would be thrown in DNJail.com – once the officers over there finds out about this.

    Did he really say all that?

    “When I explained that someone else owned the domain name Trademarking.com, he said he didn’t know that but that it doesn’t matter. He explained that he buys and sells trademarks, and if he trademarks it first, then it doesn’t matter who owns the domain name.”

    It’s a bit ridiculous to believe someone whose expertise is in the field of trademark, would boldly make such claims.

    *A case of Trademark King vs Domain King* – quite interesting!

  8. John

    Scrolling all the way down I couldn’t stop laughing. Echos of couponpages (“This will be fun”) and Nancy (“I needed a good laugh this morning”) and so much more. Yes, the hot buttered popcorn’s mighty fragrant right about now…

  9. T. Marquis

    You need to understand that the USPTO approves trademark applications where the trademark applicant is not the registrant of the domain name that they are applying to trademark. The USPTO either makes no checks or simply doesn’t care if some parties apply to register trademarks for domain names that they do not own. The domain name trademarking.com was registered over 16 years ago on August 13th 1997.
    The trademark application by TRADEMARK KING INC. CORPORATION claims a First Use Date of trademarking.com as just a couple of weeks ago on November 6th 2014. The question is : “How exactly is TRADEMARK KING INC using the domain name TRADEMARKING.com with one K”? Also TRADEMARKKING.com with 2 K’s comes up on a Godaddy parking page.
    How very curious?

  10. Mike

    Got me thinking. Given that Asia ADR’s are soooo cheap to issue UDRP’s ,could a few of us not get together and make up a few UDRP’s between us and establish some “UDRP case law” in our favour ??

  11. brand guy

    well yes a trademark trumps the owner of the same domain name. If the trademark can show a different class, use in commerce yes. ie example gli.com. There are several trademarks on these letters and the domain is for sale. The case is different if the mark is famous. And to know acknowledge ricks domain trademarking.com if the owner files for a different class he owns the trademark. However he cannot go after rick because rick owned the domain trademarking.com before the filed trademark and the mark is filed in a different class.
    However this guy does look like an idiot and does not comprehend ip law. The uspto examining attorney will probably issue an ugly letter educating this yeahoo.

  12. j s

    Doesn’t look like he’s going to get any of these….

    Here is an excerpt from his failed google.com

    http://tsdr.uspto.gov/documentviewer?caseId=sn86463871&docId=OOA20150501193046#docIndex=9&page=1

    Generic top-level domains (gTLDs), such as “.com” and “.net,” are generic locators for Internet website addresses and provide no meaningful source-identifying significance. See Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007); TMEP §§1215.01, 1215.02, 1215.09; cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009). Thus, a non-source-identifying gTLD is less significant in creating a commercial impression in the minds of consumers, and is generally given little weight when comparing marks. See TMEP §1215.09.

    In this case, the parties’ marks have a highly similar commercial impression based on shared wording. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

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