We Beat Back Sony’s Attempt to Register A Trademark On A Domain We Own; Move.me

We just took on one of the biggest company’s in the world and won.

We acquired the domain name Move.me, in a auction by the .me registry on Sedo.com in November 2010.

Sony launched it product fits called Move.me, for its PlayStation 3 in January 2011

Sony filed for a trademark on term Move.me in February 2011.

We hired Erika L. Hengst, Esq,  the wife of domain developer Sean Sullivan, to object to the trademark.

Now several months after filing our objection, Sony this week, dropped their application to trademark the term Move.me

If you go to the UPTO today it shows the trademark as abandoned.

Obviously in the time following our objection and Sony’s abandonment Sony reached out to us to chat about acquiring the domain.

Pointing to the sale of Meet.me, we told them we would only consider offers in the six figures for the domain name.

They passed.

They expressed they might be interested in acquiring the domain but for no where near six figures.

To recap, Sony launches a product without having a TM, then files the TM then upon objection walks away.

We can now either build out the domain, or sell it without the threat of Sony hanging over our heads to take our domain away based on their made up TM.

How did Sony get in this position?

I think Sony, which has other trademarks for two words with a period between them, like “make.believe”, didn’t realize that move.me was an actual domain name, a thing that someone else had the rights in.

They just put two words together gain with a period but this time they matched an existing domain name.

We stood up for our rights.

Our thanks go out to Erika who did an outstanding job.

We covered another big win by Erika in a UDRP defense of the domain name ChannelGuide.com, a few months ago.

 

Comments

  1. Jp says

    Seems silly to me that they feel that 6 figures is ridiculous. They probably put a cool billion into developing the product and if they haven’t yet they will marketing it etc…

    It’s just a pride thing. They have too much pride to pay 6 figures for your domain name.

  2. Dean says

    Sony is a shadow of it’s former self, whereas they once were the Apple of a generation they hardly can compete in today’s electronic market. Either way congratulations on winning the trademark dispute.

  3. BrianWick says

    This kind of stuff is always good news.

    My experience is for a few years the PTO has not been accepting applications like DUMMY.COM – only DUMMY – i.e. the TLd (namely .com) is not allowed.

    And when Sony realized “.me” was a TLd – they likely realized they were fighting an uphill battle from more than one side of the mountain.

    This means What sony was really filing for was “MOVE” – which they likely had no use for.

  4. says

    There is now where I am confused. While most of you are considering it a win, wouldn’t you have lost out on one of the best potential buyer for that particular domain, or perhaps there is more to that name?

    Congratulations though, that’s big either way, and will certainly make an impact based on example.

  5. says

    The main issue is that you caught the TM reg, not everyone might be as diligent, or even as successful.

    Off topic – clicking the tweetmeme retweet link above redirects the user to their site, not sure if that’s a desired effect. There are plenty of other RT options.

  6. says

    Since we are playing sony trivia-

    A decade after the end of the biggest show in television history, its own story remains one of our times and a movie coming after 8 years in debate with its theme song: Save Me

    NBC made one of its biggest blunders when it canceled the Baywatch TV show after just one season. It only stayed off the air for one season before returning in sydication and becoming a hit series! It ran on every continent except Antarctica in 148 nations! Since 1989 it plays hundreds of times a day on stations around the world earning a royalty on its theme song of $200 per play.

    The original NBC theme for Bay Watch was “Save Me,” performed by Peter Cetera, with Bonnie Raitt on guitar and Richard Sterban, bass singer for The Oak Ridge Boys, as one of the background vocalists.

    So what’s a domain worth? And what morons are the mainstream that can only sue when you can see they never get it right.

  7. Bernard Lee says

    Congratulations on successfully fighting back against corporate bullies. I too appreciate your sharing this win. Looks like .me is becoming more and more prominent these days…

    @BrianWick:

    interesting comment, I wonder what happens if someone files for the tld “.believe”, does this mean someone couldn’t register “make.believe”??? Who would be responsible for policing that domain registration, the organization forming the tld, or the tm holder?

  8. says

    One important thing to note is that Sony was handed a judgement against them from the USPTO that prevents them from refiling as MoveMe and or any derivative ever again.

    This might have bigger implications for domain owners and large corporations moving forward. I think that we have been seeing a troubling trend in recent years where large corporations believe that “backdooring” domain owners by obtaining a TM is a better option than just paying for it.

    Erika Hengst is an advocate for domain owners and being one herself, she fully understands what is at stake for all of us. She has a great informational blog that covers UDRP and TM’s that can be found at http://www.WIPODefense.com

  9. says

    It is great you won, but do you think you can make more with the domain, or sell it for more down the road, than Sony would have paid you? Is it a mistake to not sell right now, and just end up holding this domain for the long term?

  10. Michael H. Berkens says

    @Domains

    Sony never came in with a hard offer for the domain, so we actually didn’t turn down any offer.

    It was their choice to walk away from the TM application and maybe the use of the term in its branding.

    I think the questions are which we don’t know the answer to is what did it cost Sony to develop, brand and market the product, what is it going to cost them to undo it, and was that really worth it to them to pass up the opportunity to own the matching domain to a new product.

  11. Jonathan says

    Sony did not contest. Not the same as winning anything, Move is not the same as Move dot me or dot anything Michael H. Berkens is week aware of this. This is a Red Herring.

  12. BrianWick says

    @Jonathan –
    “Red Herring”
    - not exactly – Sure Sony expects to brand “Move.Me” – but that will have as much effect on “.me” as O.co (Overstock) did for “.co” – none – in fact a negative effect on the brand – in fact Sony now likely realizes the “.me” TLD will now be Confuse.Me to its market – not good at all.

    It just keeps pointing back to .com being the only one on the shelf – Congrats to the owners of MoveMe.com should Sony reemerge from the boardroom with “Move” still on its mind !!!

  13. Dean says

    I started thinking how Sony paved the way for the iPod and even the iPhone with the Walkman cassette player and Sony disc (CD) player. In it’s day it was producing personal entertainment devices that became sought after status symbols, not unlike what Apple is doing today. The technology has advanced, but back then Sony was an internationally recognized brand that was known for it’s cutting edge technology and products. It took a little more than a decade for it to loose that edge and with it it’s market share. As hard as it is to fathom right now, I think it’s possible that the very thing could happen to Apple in ten-twenty years from now.

  14. Aggro says

    Good job

    That’ll teach Berkens!

    Even Sony knows that .me names aren’t worth 6 figures TO THEM

    By “default”, just like these crappy names:
    - college.me
    - ctivist.com
    - forensic3d.com
    - samedaymarketing.com
    etc

  15. Hey says

    I am in a similar situation. A multi-billion, household name, company filed, and got, a TM on a domain I already owned. I was unaware of this until they bought the .com from its (pre-TM) owner, -which was several years after the company got a TM on the name. I own, and operate a site on, the .net… but have not heard anything, either way, from the company… and its been almost a year since they bought the .com.

  16. Nic says

    In the nicest and friendliest possible way….

    “We just took on one of the biggest company’s in the world and won.”

    What relevance does the size of the company have to the registrability of a mark? (Rhetorical question.)

    “We can now either build out the domain, or sell it without the threat of Sony hanging over our heads to take our domain away based on their made up ™.”

    First of all, did you not say they already have a mark? A common law trademark? This is separate to registrability. And secondly, this is where the size of the company may come in to play, eg if they waned to take some action on the basis of passing off or whatever else they could dream up and pursue, argue etc.

  17. says

    The objection mechanism in the TM Office has proven to be a little known way to stop tm applicants from obtaining a federal tm. I have also used it successfully for my clients but you have to convince the TM Commissioner that the objection is justified. Congratulations on a job well done!

  18. Josh says

    Maybe it is just me but I would have not said a word, let them get their TM and commit to a project more so after that, perhaps marketing etc. It would put them in a MUCH tougher spot to walk away of they could at all. Unless of course you planned on building a site for playstations then good job in stopping that TM use.

    I think this was a gaff tbh Micheal, not a win.

  19. Michael H. Berkens says

    Certainly a lot of interesting points here.

    There are a lot of other uses for this domain then Sony’s proposed use and therefore a lot of other buyers in the world.

    If Sony was willing to throw away tens of thousands to hundreds of thousands in marketing, planning, legal fees and walk away from the project rather than make a realistic offer for the domain, then they aren’t by definition the highest and best buyer.

    There are others it could be an app developer, a cloud provider or a national moving company, that will buy the domain for six figures or partner on the domain.

  20. says

    You make good points, Mike. One clarification. I went to the PTO website and saw that your company brought an opposition proceeding against the opposition and then Sony answered the opposition complaint. Then, they withdrew the application. My last comment was about another creative approach to preventing an application from going forward, which is to “object to” an application. That’s an entirely different procedure and it requires a heck of a lot more ammunition to convince the PTO Commissioner to prevent an application from moving forward. Still, a job well done!!!

  21. Chris says

    @BrianWick

    I didn’t think the PTO was approving trademarks for .COM’s either, which is why I was surprised to see that GolfBalls.com is a registered trademark – registered and renewed in 2011. Granted, the trademark is only for clothing, footwear, and headgear and not actual golf balls, but I was still surprised.

  22. BrianWick says

    Hi Chris,
    GOLFBALLS.COM first use was 1998 and the tm was awarded in 2001.
    Apparantly they were allowed to renew it in 2011 based on their history – maybe some lawyer advise.

    I first became aware of the TM not being allowed to include a TLd in my conversations the guy that was awarded a TM for CHEAPBOOKS.com (David Tibero) – he mentioned he was advised he was one of the last going back to 2007 i think.

  23. says

    @ Karen

    Do you think it is possible that Sony withdrew because they knew that continuing forward would be a further waste of their time?

    I suppose to some extent it’s a bit disappointing to have not been able to see the full outcome had Sony not withdrawn their application. That being said, I think it is certainly in the best interest of Mike that Sony decided to do so before things progressed further.

    As you know, these TM disputes can drag on for some time and it ending at this point would certainly prove to be a more cost efficient method.

    I think it speaks pretty loudly when Sony who is certainly capable of pouring a ton of money into a endless pit to defend this TM application simply walks away, essentially conceding defeat.

    To imply that this was any less of a victory or required less effort and ability seems unfair to say the least.

  24. Roy says

    I think you could have walked away with some cash and Sony goodies here…who knows what else business/contact wise. To me, this was a huge missed opportunity on a crap name you most likely will never develop, nor had any plans to in the first place. Be realistic. I suggest an in-depth look into your negotiation process and make necessary changes so that an opportunity such as this is not missed in the future. This was not much of a win, in my opinion as you shelled out legal fees and are still stuck with the crap name. I would have at least sold it an reinvested in a .com name that earns solid revenue. You say you “beat” Sony, I say you messed up on this one, bigtime.

  25. Gazzip says

    Move.me™

    Move.me™ isn’t a game. It’s a software server application for the PS3™ system that uses the PlayStation®Move motion controller as an input device.

    “Move.me™” is a trademark of Sony Computer Entertainment America LLC. “PlayStation” and the “PS” Family logo are registered trademarks and “PS3” and the PlayStation Move logo are trademarks of Sony Computer Entertainment Inc.

    http://us.playstation.com/ps3/playstation-move/move-me/

    They seem to think they already own the TM

    They’ll be back, good luck :)

  26. says

    @Roy

    I think Mike made an excellent descion , move.me is a fantastic name not only for Sony . It has such strong branding potential. I understand that .com “is king” but in this environment buisness models change quickly. Just five years ago rim’s blackberry held 75 percent market share in the smart phone arena . http://onforb.es/Hcvh9O but it is clinging to hang on now. General motors held over 50 percent market share before the imports starting showing up.

    I draw a parallel to the strong .me , .tv and others gaining ground and being adapted by some very smart people.
    Ora.tv backed by Carlos slim , not a mistake! He doesn’t make many.

    As the .anything starts to bring awareness to the general public. Move.me will most certainly be worth more than moveme.com. Just my two cents.

  27. says

    @Sean

    Yes, it is possible that Sony realized that it would most likely be difficult for them to presently get a federal tm on a .me extension. As for any implications. There were none. My comment had to do with an entirely different procedure, which is known as an “objection” and is used at a totally different stage of an application and is an entirely different procedure that requires significant industry support to topple an application. There is no better or worse procedure. In this case, the opposition procedure was the correct one used and it seems to have worked for now.

    Mike’s blog had called the procedure used an “objection” and I hadn’t look at TESS yet to see that an opposition proceeding was used. That’s all my comment was about.

  28. says

    @ Karen

    Not sure what you mean by stating that it seems to have worked “for now”. Sony is actually not able to refile (as Move.me or MoveMe) as a result of the way in which they withdrew their application. It could not be anymore definitive.

    This case was extremely important for the entire domain community as it clearly has implications that could seriously effect the new tld’s coming and the individuals investing in them. I can tell you personally that Erika presented a massive amount of evidence that illustrated why Sony should not be allowed to obtain a TM on what is someone else domain.

    On a side note (unrelated to our conversation) it’s disheartening to see so many people being critical of Mike for taking Sony on. Focusing only on the fact that in their mind, he may have missed an opportunity to sell the domain to them. Firstly, that’s not true. They’re certainly capable of purchasing the domain still.

    More importantly Mike is doing what many people don’t. He’s fighting a Fortune
    100 company because it’s the right thing to do. If he had allowed them to file a TM on Move.Me (a domain name) it would have set a very disturbing precedent that could be used by other corporations later on any number of domains. I do not think greed had anything at all to do with this. I think Mike did what was right to protect himself and his domain and in doing so protected many others as well.

  29. domain guy says

    why would sony back down from their ip? was the project not worth it to begin with? or would sony just rebrand the project? it does not pencil in my head…commets mike?

  30. BrianWick says

    If you have all the money in the world to market or brand something you can put quotes around anything like “Move.me” and plaster it all over billboards, mags, tv and every other media outlet.

    But for regular folks like me who do not have unlimited resources – we need a .com.

    My guess is Michael is a very mythodical investor and businessman – and both oweners of Meet.me and MeetMe.com will end up with a very large smile on their faces one SOny reemerges from the Boardroom – once again very good work MHB.

  31. Mary Race says

    My feeling is that Michael not only chalked up a singular victory here in a Goliath vs. David case, but also and more importantly was victorious at setting a legal precedent for all domainer’s seeking to protect the value of their investment no matter whose deep pockets you happen to come up against. Congrats and thanks to you Michael on your astute insight and your well armed legal eagle Erika!!

  32. tom says

    I had to go back and read the first article on this, I’d forgotten all about it. Looks like I recommended to fight the registration of Sony TM in my first post. Congrats on the win, I’m surprised Sony dropped it though. I’d thought they’d put up a bigger fight.

    The Sony Move and Xbox’s Kinect were lame aftermarket add ons. They’ll probably be standard equipment in the PS4 and 720 later this year, so I can see Sony’s objection to purchasing the move.me domain. It’s not a big enough product now. They should have bought it at launch and set up a promo site using move.me. Maybe it would have helped the product. I know I didn’t buy it.

    BTY, on Playstation website, they’re still indicating move.me as TM. I’d send them a cease and desist letter to have them remove the infringing TM logo on their site at http://us.playstation.com/ps3/playstation-move/move-me/.

    Also, could you register the trademark? Or would Sony then object? It seems you would have as much claim to it as anyone, actually more if you registered the domain prior.

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