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dwyl / hq

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https://github.com/dwyl/hq/issues
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Expanding the DWYL Trade Mark to US #228

Open ghost opened 7 years ago

ghost commented 7 years ago

It will cost approximately £871.65 to expand the DWYL trade mark to the US.

Should we do this?

nelsonic commented 7 years ago

@markwilliamfirth I think this decision is for @iteles to make. I think an IP Lawyer should be consulted to get a clear understanding of what we are applying for, what we can expect to get and how long it will take... Is it a separate application for the dwyl name vs. the logo or can they be done simultaneously? (preferably at a reduced cost).

My "vote" would be to invest in the trademark because it adds to the Twitter claim and will help us get the Instagram too. Also, once it's done, it's done. and we can move on with building the product without "fear" ...

I would .apply() for the trademark in US before the request for domain transfer just so the ball is rolling with the USPTO but I would NOT mention it in the initial email to the current "owner" of dwyl.com ...

if the chap who currently has dwyl.com flat out refuses to negotiate we can wait for the trademark to come through and then try again, politely reminding him that we have the trademark and would prefer to pay him for all the money he has spent renting the domain until now rather than open a dispute with ICANN ... https://www.icann.org/resources/pages/dispute-resolution-2012-02-25-en#trademark

iteles commented 7 years ago

I'd go with speaking to an IP lawyer first to understand what it is we'd get for this and then also looking into #229 - if we're going to do this, we want to do it before the end of the financial year.

ghost commented 7 years ago

@iteles noticed https://github.com/dwyl/intellectual-property/issues/3

Weird that London IP advised you that it would be 2k? Was that only for the word mark, "DWYL"?

Were there any questions they didn't answer? It seems pretty simple to me and London IP covered the US when I asked about the states last time I called.

Or do you mean in terms of raising a dispute, as opposed to just getting the TM?

ghost commented 7 years ago

@nelsonic I thought the point of the application was to mark DWYL so we could challenge the .com domain, do we need the logo too? Don't see much point to marking the logo at this moment in time.

ghost commented 7 years ago

@nelsonic I spoke to an IP lawyer today and they said that we don't need to have a US trademark to claim under UDRP (have you heard otherwise?). Cost to file a UDRP dispute is $1500, equivalent £1202.98.

I suggest we email John and make an offer of approx $250 and go from there.

Alternatively we could wait until the expiration date in June (2017-06-15) to see if he fails to renew (unlikely to fail to renew in my opinion).

I'm in favour of moving fast and contacting John and making an offer.

nelsonic commented 7 years ago

@markwilliamfirth agree. also in favour of "moving fast" and sending him an Email. please draft it in a Google Doc and share with @iteles. thanks 👍

nelsonic commented 7 years ago

@markwilliamfirth I think we should trademark in the US independently of the email for the .com just cause I suspect that US will be a strong "market" for dwyl products & services and it would be good to have that be unambiguous so we don't get some random IP-Troll telling us we have to re-brand because they "own" dwyl in US ... We can do the email to ask to get the .com as a priority though... But we discussed improving the website before sending the email... but not urgent... 👍

ghost commented 7 years ago

Putting this on hold until the £871.65 becomes worth it.

nelsonic commented 7 years ago

It's worth it now (IMO). The sooner we get this ball rolling the sooner we can "protect" the "brand" ... 🥇 the way I think about this kind of stuff is by considering the cost to change brands for the US "market" if someone else registers the trademark (the way "WeWork" did...)

iteles commented 7 years ago

Let's get this done 👍

@markwilliamfirth Could you spend 10 minutes looking at the paperwork and let me know how much time you think it will require so that we can determine whether #321 is a still top dog in terms of priorities?

ghost commented 7 years ago

http://www.wipo.int/madrid/en/forms/

form_mm2.pdf

@iteles I have no idea how long it will take but I think this is the correct form

It should cost 1041 swiss francs (currently approx 799.95 British Pound) - do you want to proceed?

iteles commented 6 years ago

Oh, sorry, I thought you were still going to provide an estimate for this to determine priority. Yes please, let's!

I've reviewed the form and it doesn't look like any of the questions are 'essay' questions, they're mostly one liners and tick boxes so I'm thinking it won't take long if you're not interrupted (the AMOUNT OF FEES will take a little longer maybe).

If you need an info from me just let me know, I'll keep an eye out for this issue.