Hi
This is email I have just received:

"I see that you own the domain virtualsex.biz and figured you would be
interested in knowing that these people are trying to get a trademark
on the name of your web site.You guys don't know me, but you and I are
on the same side in this situation. You may or may not know that
Digital Playground has applied for registration of the trademark
"Virtual Sex." You may have already heard from their lawyers.
The trademark is currently in the "Published for opposition" status
with the US PTO.In short, unless someone objects, they will likely get
the trademark, and the first thing they will do is take your domain
name away.We are concerned about this as well.I would suggest you
immediately review this with your legal council.It was published on
October 8th. Unless filed within 30 days, your protest will be
useless.
Don't take my word for this...CALL your attorney NOW."
End of email.

I registered virtualsex.biz for my future business and because it's
generic term I believed no one can take it from me.What is the true?
Even if they manage to get this trademark it will be just US trademark
and I could have this trademark in some other country.Would it be
enough to secure my domain name.?If not, what I have to do.I don't
have trademark at the moment.
Thanks
Nik

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Request for Question Clarification by tar_heel_v-ga on 01 Nov 2002 07:47 PST

Who was the sender of the email?  The misspelling of "concil" would
cause me some concern.

nikenn,

Trademark and domain name rights has been an on-going battle for
several years. Typically, you will see large companies going after
so-called "cybersquatters" who purchase domain names with the sole
intention of trying to get money from the respective company who's
name they have used in the domain.  There have been two recent acts,
The Anticybersquatting Consumer Protection Act, and the Uniform
Domain-Name Dispute Resolution Policy, that have been enacted to
protect companies.  Even as a non-US citizen, you can be affected by
these two acts.  The key to both acts, however, is if a person acted
in bad faith when they purchased the domain name.

First, I want to say that the information I am providing is exactly
that: information.  It is not to be construed for legal advice.  I am
not a legal professional. For legal advice, please see a lawyer or
seek other legal professional advice.

According to the PTO (patent and trademark office) the term "virtual
sex" was filed for trademark status on April 12, 2000 by Digital
Playground Corporation out of Van Nuys, California.  The application
states "Services IC 009. US 021 023 026 036 038. G & S: Prerecorded
video and audio cassettes, CD Roms and DVDs featuring adult
entertainment; interactive audio and video cassettes, CD Roms, and
DVDs incorporating several media; namely, audio, audio visual, audio
video graphics featuring adult entertainment; and software programs
incorporating several media; namely, audio, audio visual, audio video
graphics featuring adult entertainment, recorded on cassettes, CD Roms
and DVDs featuring adult entertainment." From looking at the history
of the application, it was initially denied, then approved over the
last two years. You can see the information on this application by
going to http://tarr.uspto.gov/ and in the box on the left, choose
serial number and put the number 76023937 in the field.


The letter you received is correct in stating that it was Published in
Opposition on October 8th of this year.  This means you have 30 days
to oppose the trademark using form 4-17a
(http://www.marksonline.com/tm_data/fed_forms/4-17a.pdf).  Your
reasoning may be that the term is considered generic.  Should the
company be granted the trademark, conceivably, they could challenge
your rights to the domain name under either The Anticybersquatting
Consumer Protection Act or the Uniform Domain-Name Dispute.   You can
see the differences between the two acts at
http://www.inta.org/news/compchart.shtml.

From a review of the acts, it appears there a couple of things in your
favor. The first being that the acts appear to be directed to
trademarks that are famous at the time the domain name was registered.
 The other if a trademark is distinctive at the time of registration. 
Being that the trademark was not registered at the time you registered
the domain name, they may not have any options.

As some solace to you, the terms virtualsex.net and virtualsex.com are
also owned by people other than Digital Playground Corp.  I would
think they would be more interested in those names prior to yours.

I wish you luck in your endeavor.  If you need any further
clarification, please let me know.

Regards,

-THV


Search Terms:
trademark "domain name"
"published for opposition"

References and further information:

Croatian Trademark Regulations
http://public.srce.hr/patent/eng/nn/n1394.html

Trademark Information
http://www.ggmark.com/

International Trademark Association
http://www.inta.org/Default.htm

United States Patent and Trademark Office
http://www.uspto.gov/

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Request for Answer Clarification by nikenn-ga on 02 Nov 2002 14:13 PST

Thank you.It was quick and helpful.I would like to know where I can
find legal advice and if they challenge me do I need a lawyer in the
US.
Thanks
Nik

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Clarification of Answer by tar_heel_v-ga on 02 Nov 2002 22:00 PST

Nikenn..

Thank you for the kind words and I am glad I could help.  As for legal
advice or recommending legal counsel, I would recommend a lawyer who
is familiar with international copyright and trademark law.  Your best
bet, in my opinion, would be to find legal counsel in your area that
has this background, and have them recommend whether or not you should
seek counsel in the United States.  I think you will need to determine
if the costs involved in a long legal battle (if it comes down to
that) are worth it.

Thanks again for your question and good luck!

-THV

quick and helpful