Buy a trademarked name and use it in a different country.

[oberheimer]

I have been looking to buy a domain name. The company started a new business, and let their domain name expire.
They still have a tm for the old name in 2 countries/areas. Someone got the old.com in a drop auction.
Can I buy and use the name in a totally different country?
Let's say they have an EU and Swiss TM.
Can I use the name in Australia for the same TM Class?

 

[Thasreefa P M]

No, I think using the expired domain name with existing TM in different countries may still lead to trademark infringement issues. Anyway i am not a legal expert, it's better to consult with legal experts in such situations.

 

[oberheimer]

No, I think using the expired domain name with existing TM in different countries may still lead to trademark infringement issues. Anyway i am not a legal expert, it's better to consult with legal experts in such situations.

Thanks, I just wanted to see if there is a possibility before I pay for a lawyer.
The name has a few thousand links. I guess I could block traffic from those areas with a TM.
I will see how much a local lawyer charges to help me out.

 

[Peter45]

Hi @oberheimer

I'm not an expert, don't trust what I say.

theory n. 1, based on the distinction between using a phrase as TM and having that phrase registered as TM:
you saying that the company changed business could mean that that TM is still registered (i.e. nominally active) but not used anymore (i.e. it is de facto dead), in which case that name should be free to be used, even in the same country and class area of the dead TM.

theory n. 2: despite the fact that the company changed business that TM is still live and enforceable, in which case you can use that phrase only outside the geographical and economic areas in which that phrase is used as a TM (which can be broader than the areas in which that phrase is registered as TM)


Does that TM reflect the name of a product/service of that company - which now that company doesn't offer anymore having changed business - or the name of the company?
Because if it reflects the company name, the fact that the company changed business is meaningless, I guess.

A lot depends on what use specifically you are envisaging, I guess.

 

[Peter45]

.

 

[bhartzer]

You can pretty much buy any domain name if it's expired and listed for sale somewhere.

It's not whether or not you CAN use it for a website. It's the likelihood of the trademark owner going after you with a lawsuit--or if they will file a UDRP or not.

If they let the domain expire, it could be a mistake, or they don't have plans for using that particular domain for a website.

If you were to acquire the domain name, then I wouldn't use the domain for a website that's on the same topic as the trademark. For example, if it's Nike, then don't put up a website that has any content related to shoes.

 

[oberheimer]

Hi @oberheimer

I'm not an expert, don't trust what I say.

theory n. 1, based on the distinction between using a phrase as TM and having that phrase registered as TM:
you saying that the company changed business could mean that that TM is still registered (i.e. nominally active) but not used anymore (i.e. it is de facto dead), in which case that name should be free to be used, even in the same country and class area of the dead TM.

theory n. 2: despite the fact that the company changed business that TM is still live and enforceable, in which case you can use that phrase only outside the geographical and economic areas in which that phrase is used as a TM (which can be broader than the areas in which that phrase is registered as TM)


Does that TM reflect the name of a product/service of that company - which now that company doesn't offer anymore having changed business - or the name of the company?
Because if it reflects the company name, the fact that the company changed business is meaningless, I guess.

A lot depends on what use specifically you are envisaging, I guess.

According to the commercial register the company is liquidated. He works with his other company atm and he is considering using the name (TM) in the future. The trademark has been registered for 5 years and has 5 years left.

 

[Peter45]

A lot depends on what use specifically you are envisaging, I guess.

e.g. are you going to use that domain in order to
- build a new business offering the same goods/services of the company's old business?
- sell that domain to current competitors of that company?
- put up a PPC page with links to that company or their competitors?

 

[oberheimer]

You can pretty much buy any domain name if it's expired and listed for sale somewhere.

It's not whether or not you CAN use it for a website. It's the likelihood of the trademark owner going after you with a lawsuit--or if they will file a UDRP or not.

If they let the domain expire, it could be a mistake, or they don't have plans for using that particular domain for a website.

If you were to acquire the domain name, then I wouldn't use the domain for a website that's on the same topic as the trademark. For example, if it's Nike, then don't put up a website that has any content related to shoes.

Well, it makes sense if the company is as big as Nike. They have lots of trademarks in most countries.
This company has been doing business in Europe and 1 of its 3 trademarks is dead. My thought is that they might not be interested in the name anymore but it's a gamble.

 

[Peter45]

According to the commercial register the company is liquidated.
The trademark has been registered for 5 years and has 5 years left.

Ok, so here is a newbie question: if a TM is no longer used - e.g. because the company has disappeared like in this case - but the TM is still registered and active, is it enforceable?

If you get the answer to this question, please let me know : )

 

[oberheimer]

e.g. are you going to use that domain in order to
- build a new business offering the same goods/services of the company's old business?
- sell that domain to current competitors of that company?
- put up a PPC page with links to that company or their competitors?

My plan is to build a website in the same class but different country, but need to make sure I'm legally allowed to do that. I don't want to spend lot on lawyer fees (UDRP)

 

[Peter45]

Let's try another approach

let's leave aside statutes, rules, laws... and possible/potential circumstances, cases... and let's go instead straight to the point: do you intend to capitalize on that TM?

Do you intend to capitalize on the efforts those people did in the past when they established that phrase as a TM?

Do you think you will de facto - despite your intentions - capitalize on those efforts?

 

[Peter45]

He works with his other company atm and he is considering using the name (TM) in the future.

So
- they had a TM on that name in the past,
- that TM is currently still active,
- they plan to use that name again as a TM in the future,
- you plan to use that name for the same class of products they have used and will use that name as a TM for.

Your only escape way is the different geographical area
I don't know

 

[Peter45]

I don't want to spend lot on lawyer fees (UDRP)

Good news:
UDRP is an administrative procedure, not a juridical one
you don't need a lawyer : )

 

[jberryhill]

UDRP is an administrative procedure, not a juridical one
you don't need a lawyer : )

You don't need a lawyer to represent yourself in court either, if you are defining "need" as some sort of procedural requirement to have one.

You also don't need a doctor to treat your own illnesses, a plumber to fix your pipes or an auto mechanic to repair your car.

But, like most things in life, it is generally useful to have someone who knows what they are doing.

 

[Peter45]

Agreed JB, although people going to court without a lawyer, very unusual,
people entering URDP proceedings without a lawyer, not that unusual.


Oberheimer sounded to me as if he thought URDP were court proceedings.



@jberryhill
if a TM is no longer used - e.g. because the company has disappeared - but the TM is still registered and active, is it enforceable?

 

[oberheimer]

Agreed JB, although people going to court without a lawyer, very unusual,
people entering URDP proceedings without a lawyer, not that unusual.


Oberheimer sounded to me as if he thought URDP were court proceedings.



@jberryhill
if a TM is no longer used - e.g. because the company has disappeared - but the TM is still registered and active, is it enforceable?

That is true, well I guess I thought that you needed a lawyer for UDRP. I have never really looked into that before.
I see that the TM is registered in his personal name now.

 

[jberryhill]

if a TM is no longer used - e.g. because the company has disappeared - but the TM is still registered and active, is it enforceable?

In your scenario who would be enforcing it?

My driver's license expires next year. If I die next month, do I still have a valid driver's license?

 

[Peter45]

In your scenario who would be enforcing it?

My driver's license expires next year. If I die next month, do I still have a valid driver's license?

Yes, this answer was already floating in my mind.

When I look at the TM registrations I find the indication of the TM Holder and that of their representatives, mostly a lawyer I guess.
I thought that lawyer had to enforced the TM while it's still active i.e. to prevent people from capitalizing on the past goodwill of the company.

 

[jberryhill]

I thought that lawyer had to enforced the TM while it's still active i.e. to prevent people from capitalizing on the past goodwill of the company.

On their own, with no client? Who pays them? What public purpose is accomplished?

In another thread, I explained that the way you "get" trademark rights is to use a trademark. Well, CONTINUED USE is required to maintain a trademark right.

This is the flipside of the problem with domainers' irrational fixation with trademark registration databases. You already know that someone can have a trademark without having a registration. It turns out that someone can also have a registration without a trademark.

In the US, for example, after the initial six year period, maintaining a registration requires the owner to show proof of continued use, along with a fee, every ten years. But a lot can happen in that ten years. If the mark is discontinued without the intent to resume use, then the mark ceases to be enforceable. In the US, non-use for three consecutive years is presumptive abandonment:

https://www.law.cornell.edu/uscode/text/15/1127

A mark shall be deemed to be “abandoned” if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

Section (2) is called "genericide". That is what happened to marks like cellophane, escalator, zipper and nylon.

In the EU, nonuse for five years is grounds for cancellation of a registered mark. But, look at that first sentence in (1). When BigCo announces, "We aren't making or selling XXX brand widgets anymore," that's it.

The analogy I've used a zillion times before on Namepros is that my town requires a dog license if you want to walk your dog in the park. The dog licenses are open for public inspection, and valid for ten years.

Domainers are like a burglar who wants to know if someone has a dog, so they go look at the dog license database. First off, there are people in town who have dogs, but don't care to walk them in the public park, so they don't get dog license. Then, there are people who had a dog, got a dog license, and their dog either died or ran off in less than ten years.

So, yes, there are people who have dogs, but no license, and there are people who have a license, but no dog. It turns out that looking in the dog license database is a poor strategy for figuring out whether someone has a dog. It's a tool and a starting point, but it doesn't provide a definitive answer.

The same thing is true for trademarks - there are marks without registrations and there are registrations without marks.

So, if you find a registration that's been around for a while, you might want to go find out whether the registrant is actually using the mark (or licensing it to someone). Hmmm... how might you go about figuring out whether someone is actively selling something? Oh, right! By doing the thing you should have done in the first place!

One really good clue would be to look at the full file under TSDR and look at the last specimen of use filed. A lot of the time, it will be a print-out of a webpage. Get the URL from that specimen and have a look.

But, no, by all means, don't hire a lawyer. What do they know?

 

[Peter45]

I then contacted about 10-20 companies that used this same term or very similar terms in their name or marketing taglines.

Hi @jberryhill

you stress the distinction between using a term as TM and having that term registered as TM.
In order to look whether that term is registered as TM, go to e.g. TMVIEW,
in order to look whether that term is used as TM, go to Google.
Ok.

But how can you understand (through google?) whether a company is using a term as TM or whether they are not using it as a TM?

What does it mean - if any - for a company to not use a term (in the name of the company or in the name or one of their products) as a TM?

 

[jberryhill]

Is Ford Motor Company still selling the Edsel?

Yes or no?

How about Studebaker? Can I buy a new one of those?

If you did not know the answers to those questions, how would you find out?

Well, one way to find out things like that is to use Google site search, for example if you Google:

edsel site:ford.com

You'll find lots of historical information, but no cars for sale.

As I was writing this, I did not know whether or not Ford still sold a Mustang model, so I stopped and did something to find out. Can you guess what I did?

Well, waddya know, it looks like Ford is still selling a Mustang, since having a 2023 model year is a pretty good indication that they are still selling them.

Another great test is what I call the "First verb in the Wikipedia entry" test. The first verb in a Wikipedia entry is usually "is" or "was".

Let's stick with Ford cars for a minute... How about these models:

Escort

Torino

Fiesta

Focus

Bronco

How might you go about figuring out whether Ford still makes and sells those models?

Trademarks are distinctive names given to things by their makers in order to distinguish them from other things in the marketplace because they are trying to sell those things. Typically, when someone is trying to sell something, they don't hide it.

So, does the Coca-Cola company still sell a diet soft drink called Tab?

When I typed that question, I actually had no idea. Within a fraction of a second of looking for the keywords Coca-Cola and Tab, Google produced this:

What's the first verb in that Wikipedia entry?

And not only that, but I don't even need to read more than the Google squib to see "discontinued in 2020".

You know what you don't get? You don't get links to Coca-Cola selling or advertising Tab.

A joke from Back to the Future, which won't make sense anymore:

Maybe I'm missing something, but I don't think the question of "Is someone selling something called '(whatever)' or not?" a difficult question.

Think of a product from long ago - Nehi soft drinks, Twenty Mule Team detergent, or Burma Shave... pick something you liked as a child and don't know if it exists anymore. Breakfast cereals are a good category for that one. Even Google's "related questions" knows why people search for some things...

Now, it just so happens that there is something of a minor industry in reviving old marks. There are long-dead marks like RCA or Victrola which still have some nostalgic afterglow, and which some people revive. One well-known example of that is Indian Motorcycles, which was a major brand decades ago, went out of business, and was revived as a brand by completely different people. Shinola is another good example of that sort of thing.

But, good golly, if your starting point was, say, a US trademark registration that is eight years in to its current ten year maintenance period, then you have the name of a manufacturer, the trademark, and you can access the last-filed specimen of use online. It should not take some kind of detective work to figure out "Does X Corp. still make Y brand products?"

 

[STIJL]

If the company or product your launching conflicts with the other parties original trademark registration regardless of TM or company status, then you could have a problem no matter where your located on the planet.

If your product is not related or conflicting your set.

 

[oberheimer]

If the company or product your launching conflicts with the other parties original trademark registration regardless of TM or company status, then you could have a problem no matter where your located on the planet.

If your product is not related or conflicting your set.

They can't just claim the whole world without being in business there. Maybe if it's Google or something similar then I wouldn't bother.
The questing now is. The Trademark is registered to a private person because the company doesn't exist any more. He is not using it so he is basically trying to defend a trademark that has not been in use for 1 year. I won't use it for the countries that it's registered in anyway

 

[DomainNature]

I have read today by coincidence some TM policy.
If they dropped the domain intentionally it is a first sign of abandonment, now they have to provide evidence to TM office that they still use the TM to keep it alive, see if they continue to sell products/services under this TM, if yes then you will have to wait until they stop, if no good to go.
In short it is probably abandonment and they not plan to use the TM for later, maybe just liquidating stocks of it's last products, you can buy the domain and will have to wait, you also have a Bona fide to develop it as a business as I have read, but not to resell to current TM owner.
I have dropcatch a domain from Markmonitor, it belonged to a popular brand, but TM for it is already dead, I m not afraid with this domain in my portfolio, and I plan to sell it later for big money!
P.s. consult with a lawyer better!