ok, so i have a completely unique phrase that i made up nearly 1 year ago. i purchased a domain name with my phrase (such as www.myphrase.com) about 7 months ago. my cafepress store name is also this phrase and i sell shirts with this phrase.

my phrase is completely unique, meaning when i type it in on the marketplace search only my stuff comes up. there are no websites or anything where someone could get this phrase from other than mine. a few days ago i was just playing around on the marketplace and ran the search on my phrase again. this time it was my stuff and a t shirt being sold by someone else with my phrase on it. my stuff has the phrase accompanied by different images but the other shirt was just text. the other person's shirt had pretty pink font, like mine, but it wasn't the same exact font.

i emailed CUP and here is the reply i got;

quote:

If you believe that your intellectual property rights have been infringed by a user of our service, please provide our Intellectual Property Rights Agent with a notification that contains the following information:

1. A physical or electronic signature of a person authorized to act on behalf of the owner of the copyright or other rights that have been allegedly infringed.

2. Identification of the copyright or other rights that have been allegedly infringed.

3. The URL used in connection with the sale of the allegedly infringing merchandise.

4. Your name, address, telephone number and email address.

5. A statement that you have a good-faith belief that use of the material in the manner complained of is not authorized by the rights owner, its agent or the law.

6. A statement that the information in the notification is accurate and, under penalty of perjury, that you are authorized to act on behalf of the owner of the copyright or other right that is allegedly infringed.

i don't own any copyright or trademark to this phrase but i "thought" it would be enough that i was the owner of the domain name featuring this phrase and my store was named for it and i was the first to upload images with the phrase on cafepress. the "other" store's shirt is a bit ugly in my opinion because they chose an ugly font and the store just seems to be a new one with only 3 or 4 designs, so i'm not scared that they will out sell me or anything. it's just the principle of the matter.

so, my question is, is the only thing i can do is to go and get a copyright? i told cafepress "CUP" in my email to them that i owned the domain name and store by that name but i don't think i told them i didn't own a copyright. i thought if you owned the domain name and your "brand" was that name, it was protected by a common law copyright or whatever you call it.

any help/suggestions would be appreciated.

Short phrases don't fall under copyright protection, what you would need is a trademark.

quote:

i don't own any copyright or trademark to this phrase

If it is a truly unique phrase (you mentioned doing a marketplace search but not search engine searches, so someone else may have "invented" it first)... then you do have trademark rights to it, effective from the date you first used it in commerce.

However, since you haven't registered the phrase as a trademark or word mark, your rights are limited.

For more info, see

http://www.uspto.gov/main/trademarks.htm

Also look for case law and look for information on law firm and law school web sites. Or pay for a consultation with a trademark attorney.

A search engine search, while very helpful, could also give you false negatives. You would really need to do a search with the USPTO or similar organization.

Domain names might help assert that you are using and protecting the trademark (which is an often a factor in court cases), but it's not a trademark and, so far as I know, has no bearing on whether or not you have rights to a phrase.

The other question (academic perhaps) is whether the phrase was ever registrable. This is not at all as self-evident as people seem to think.

All good advice. Also, we rarely "own" a domain name - we usually are just "leasing" it as part of yearly/five/ten/etc. terms. It doesn't equate to owning the name or phrase. Nor does having an online shop. It can factor into existing usage but that's a bit of a different angle.

As DoP mentioned it isn't anything relating to ownership nor owning of property - it's often the other way around (eg. "Best Buy" the electronics store trademarks brand identity elements and is then protecting the domain name itself - not the reverse).

The reason CUP responded with that list of criteria is because they need to make sure YOU have your ducks in a row and can properly document some level of expected rights. It sorts through those who have a case and those who might mistakenly think they do because take downs are serious business and must be done properly. As was mentioned: It's not always as self-evident as many people think.

just give CUP the info they asked for and they'll take care of it.

they do for me. You likely have "intellectual rights" to that phrase.

The consequences of the statements in a "take down" demand can be significant. No one should file a take down unless they are prepared to legally defend against a counter claim that the "take down" was improperly filed. It can get expensive to make a mistake in filing a "take down" demand.

Do not accept a conclusion about whether you do or do not have rights in the phrase from anyone other than someone you can hold accountable for a mistake. It is easy to give advice. You have to deal with the consequences of accepting it. You can too easily give up what you should not, or wrongly fight when you should concede.

i am in the long process of trademarking my business name /logo .

the trademark office told me , i can not trademark my domain name because i am only the
"current Owner".

but that i did have control of the use of my domain name , meaning others can not use it or link to it with out my consent.

i think phrases fall under word marks ?

quote:

i am in the long process of trademarking my business name /logo. the trademark office told me , i can not trademark my domain name because i am only the "current Owner". but that i did have control of the use of my domain name , meaning others can not use it or link to it with out my consent. i think phrases fall under word marks ?

I suspect that some specifics have gotten lost along the way. It is unlikely that a court would agree that a domain holder can entirely prohibit others from linking without consent. A domain holder would have to show that there was some legal principle of impairment or infringement involved in the use of the link, beyond mere publication without permission.

quote:

the trademark office told me , i can not trademark my domain name because i am only the "current Owner".

but that i did have control of the use of my domain name , meaning others can not use it or link to it with out my consent.

It sounds as if you forgot to mention, or they didn't understand, that you also use the words in the domain name as branding on products for sale.

Registering your phrase as a trademark is probably a separate issue from using it as a domain name.