Registering a trademark, company and a trademark domain

[MarkCharles]

In a far away land there's a publicly held company with a trademark domain. The company has been around for a few years, is doing well, and has recently expanded into other countries where they also have trademark domains.

For the purposes of this question they outsource chair polishing and screwing the lids on toothpaste tubes.

It seems very likely they will expand into another country - lets call it Hutt River Province, but as yet they don't have a domain name, business name, or trademark here....

I also have business polishing chairs and capping toothpaste tubes - currently I trade under my own name (Prince Mark Charles Parsley Chives the Third) and I've been thinking about starting a (limited) company for some time.

Suppose I was to register a Hutt River Province limited company (single director, single $10 share) called ButtTubeScrewers, registered the trademark and the domain.... (although not necessarily in that order)

I've checked the legality - in Hutt River Province I'd be able to hold the domain - and the trademark, even if (Big)ButtTubeScrewers complained.

Q. Is this likely to be a good idea?
Q. What are some major considerations?

No, ButtTubeScrewers are not car manufacturers and I am in substantially the same business (similar industry sector) - and I've been around longer than them. I can't say what that business is - but some of you have it with tomato sauce, others enjoy it drenched in vinegar.

 

[AustinP]

IMO, most of this needs to be done in the Sunrise period. Its rather easier then.

 

[David Z]

While this is maybe too simplistic an answer, it essentially depends on who did what first and is prepared to both demonstrate and protect that. If I have a company and trademark called Dave's Evil Empire successfully selling electronic gadgets in North America and Europe, I can't use Dave's Evil Empire in, say, Singapore if someone used those terms to sell electronics in that country before I opened and sold there.

With that said, that won't necessarily stop some people with deep pockets from trying anyway. That's a reason why I always thought it depends on who you're dealing with if you'll have domain-trademark issues.

 

[MarkCharles]

Thanks for the suggestions

IMO, most of this needs to be done in the Sunrise period. Its rather easier then.

Thanks for the suggestion - had to look that up. Lead me to the WIPO page which was an education (almost made up for having to look at Jimmy Beggar's miserable scalp).
Hutt River Province has had it's own TLD for over a decade longer than ButtTubeScrewers have been doing business.... I'm not sure how that affects things. IAMNAL.

While this is maybe too simplistic an answer, it essentially depends on who did what first and is prepared to both demonstrate and protect that. If I have a company and trademark called Dave's Evil Empire successfully selling electronic gadgets in North America and Europe, I can't use Dave's Evil Empire in, say, Singapore if someone used those terms to sell electronics in that country before I opened and sold there.

ButtTubeScrewers have never done business in Hutt River Province. Very few Huttites have even heard of ButtTubeScrewers.

With that said, that won't necessarily stop some people with deep pockets from trying anyway. That's a reason why I always thought it depends on who you're dealing with if you'll have domain-trademark issues.

Thanks, it's something to think about.

ButtTubeScrewers have some smart, experienced people on their board - and deep pockets.

I intend to slightly modify what I currently do so that I'm in the same business as them, and I'm planning on selling the business in a few years anyway (which is why I'd already been considering changing from trading under my own name and forming a company).

"They" do have deep enough pockets to screw me without buying me dinner first, but I'm hoping they'll buy me out lock, stock and barrel. My business doesn't have any real assets, only good will and some contracts.

It now occurs to me that they might just trade here as Hutt River ButtTubeScrewers...

 

[David Z]

Like (almost) anything, by the way, there might be exceptions. One exception in
here is what I call unique and famous trademarks such as Google and Facebook.

Google and Facebook are arguably famous all over the planet, even though they
haven't opened office in every developing/developed nation. So even if either of
them don't have an office here yet, I can't just use Google or Facebook-whatnot
to do similar or even completely different thing because people will likely confuse
me with them. (and that's if they press the issue, of course...)

Essentially, it depends on (if any) strength of trademark, and consumer behavior.
And how much that someone can afford, of course. (heh)

IANAL. However, I passionately study these things, and am thankful I sometimes
keep in touch with lawyers with real-world experience in these matters. (I can
also refer you or anyone to any of them if interested...)

 

[MarkCharles]

Like (almost) anything, by the way, there might be exceptions. One exception in
here is what I call unique

Is there another kind of trademark? ;-p

and famous trademarks such as Google and Facebook.

Google and Facebook are arguably famous all over the planet, even though they haven't opened office in every developing/developed nation. So even if either of them don't have an office here yet, I can't just use Google or Facebook-whatnot to do similar or even completely different thing because people will likely confuse me with them. (and that's if they press the issue, of course...)

Essentially, it depends on (if any) strength of trademark, and consumer behaviour.
And how much that someone can afford, of course. (heh)

Thanks for the thoughts - ButtTubeScrewers are pretty unknown in Hutt River Province. I do a fair bit of work in Tankland (where they started) and only heard of them recently. Every Huttite ChairPolisher I've asked has said "huh"?.
I intend to get appropriate legal advice before doing anything. My usual shyster is a proper slippery bastard and will probably know the right person to ask.