question 'Dead' trademarks

[JayDNM]

I've registered a domain that is trademarked, however the trademark on the US patent office states the registrant company as being 'dead', would this mitigate the general risk of registering a TM'ed domain or would it be best to just get it refunded?

If it makes a difference when judging.. the domain is 'Quick Tax Solutions' (dot) com.

Thanks!

 

[PAINC]

Seems like it was abandoned in 2014 and you should not have a problem with the name.

 

[alcy]

sounds okay!

 

[Julio]

What IF the trademark owner decides one day to get the trademark back what happens then?

 

[Hypersot]

What IF the trademark owner decides one day to get the trademark back what happens then?

Exactly the thoughts I have whenever I buy 'dead' TMs

The solution I have found is, as long as they can prove the ownership, ...just give it to them for the price I initially got the name and be done with it.

Not many will agree with me on that one though

 

[PAINC]

What IF the trademark owner decides one day to get the trademark back what happens then?

When a domain and trademark is abandoned like this, the owner no longer own the rights to the TM.
In effect, this frees the trademark, so that anyone else can use it without any recourse from the original TM owner.

 

[todaygold]

When a domain and trademark is abandoned like this, the owner no longer own the rights to the TM.
In effect, this frees the trademark, so that anyone else can use it without any recourse from the original TM owner.

I could be wrong, but I don't know if that's necessarily the case. A trademark can be 'dead' for a number of reasons, I believe even for something as simple as not renewing it. But just because the trademark is 'dead' as far as an 'official registration', doesn't mean the company isn't still using it. Remember, trademarks don't have to be registered...the company may still be using the trademark, even if they forgot to renew or whatnot 'officially'.
This article gives some good answers, with mostly all of the lawyers agreeing that just because it is listed as 'dead' does not necessarily make it safe to use: avvo.com/legal-answers/uspto-gov-and-doing-a-trademark-search-what-does-l-1148385.html

 

[Mister Funsky]

Keep it...the reason the trademark is 'dead' is the issue...if uneasy about a name just try to move it out of your portfolio...I've had several names over the years that were once trademarked with no issues.

If they (previous trademark owners) renew the trademark then they will contact you eventually...until then just operate as normal.

Of course, I am not a lawyer...only played one in a college skit once.

 

[Sophia Alice]

When a domain and trademark is abandoned like this, the owner no longer own the rights to the TM.
In effect, this frees the trademark, so that anyone else can use it without any recourse from the original TM owner.

No , They will still have the right if they renew it as they are the first persons to claim the name ...

Situation will be different if some else gets the tm as you have bought the domain before you own it

 

[frank-germany]

I would not hesitate to register a domain that had a trademark registered that is dead
- you wouldn't necassarily need to use it in the orginally protected " classes " -

 

[PAINC]

The rules about Trademarks are not carved in stone

I might be wrong but then I read this:
http://www.wikihow.com/Revive-a-Dead-Trademark

"If at least three consecutive years have passed since you have used the trademark and, in that time, someone else has begun to use the mark or registered the mark with the USPTO, you will likely not be able to revive your trademark and must instead purchase the rights from this new user."

When were the domain/Trademark "Quick Tax Solutions" abandoned? If it was 2014, then it's probably close to three years.

 

[frank-germany]

The rules about Trademarks are not carved in stone

I might be wrong but then I read this:
http://www.wikihow.com/Revive-a-Dead-Trademark

"If at least three consecutive years have passed since you have used the trademark and, in that time, someone else has begun to use the mark or registered the mark with the USPTO, you will likely not be able to revive your trademark and must instead purchase the rights from this new user."

When were the domain/Trademark "Quick Tax Solutions" abandoned? If it was 2014, then it's probably close to three years.

that may mean 3 complete years
1. jan to 31. dec
3 times in a row

 

[Sophia Alice]

Like as i said

As frank said you should be having no issues if you register it for a different class

 

[jberryhill]

however the trademark on the US patent office states the registrant company as being 'dead'

That can mean any of several things and, once again, the domainer fixation on confusing "is there a trademark" with "is the trademark registered" leads to the usual range of wrong and incomplete answers.

I have a dog. Two years ago, I registered my dog with the state for my dog license. Last year, I didn't pay the renewal on the license, and the license expired. Do I still have a dog? Yes, and it will be happy to bite you. The mere fact that my dog's registration lapsed does not mean that I do not have a dog. My dog is still very much alive.

If there is one thing that domainers can be depended upon to get wrong, it is understanding what trademark registration means in the US. And, please note, my comments here apply to the US registration system.

The USPTO does not "grant trademarks". Under US law, you obtain trademark rights by use of the mark in commerce such that it acts as a distinctive identifier of your goods or services in the marketplace. You don't have to "do" any official act in order to have a trademark, if the thing you are using as a mark performs the function of a trademark. So, if I put "Berryhill" on cans of dog food and sell them, and nobody else is selling dog food with that on it, then it is a mark for dog food. If I put "dog food" on cans of dog food and sell them, then it does not function as a trademark, because "dog food" is not distinctive of a brand of dog food.

Now, if you have a trademark, you can apply to the USPTO to obtain registration of your trademark. It's the same thing as registering my dog. First I get a dog, then I can register my dog.

Federal registration of marks provides a lot of advantages. It provides public notice of your mark. In US court proceedings, it provides presumptive evidence that the mark is valid, distinctive, and yours. You can sue without having a registered mark, but you will be required to prove those things. Also, the amount and types of damages you can recover are enhanced if you have a registered mark. Finally, you can apply to register a mark you are planning to use in the future, but it will not be registered until you actually start using it and provide the USPTO with proof of use of the mark.

Okay, so what does this mean. First off, when you search the USPTO, you are not search a "database of trademarks". You are searching the USPTO records including filed applications, pending applications, old applications, registered marks, and expired registrations. The notation "dead" can mean:

1. the application was refused registration and the applicant gave up
2. a renewal fee for maintaining a registration was not paid, because the owner simply forgot, changed lawyers, or something else; or
3. a couple of other things which I don't feel like typing out.

All it means is that the file in question has reached the end of its natural life at the USPTO. It means that the record you are looking at is not a registered mark. It might mean they are no longer using the mark. It might not. It might mean they would have a more difficult time establishing their ownership of the mark. It might not. It might mean the mark was refused registration for some reason - possibly because someone else has a similar registered mark. Some of those questions can be answered by looking at the complete electronic file by clicking the "TSDR" button you see just above the file data when you do a search.

So, if you find a record with the "dead" notation, it could mean any of several things. it is a useful data point, but it is not the end of the analysis.

As frank said you should be having no issues if you register it for a different class

Or that can cause other problems for you. First off, if you aren't using the domain name as a trademark for goods or services identified by that mark in commerce in the US, you aren't going to register jack with the USPTO. Secondly, many people monitor trademark registration filings in order to oppose applications similar to theirs - even if the goods or service may be different. So, you can, by filing an application in certain circumstances, attract the fight you didn't want in the first place. Third, if we are talking about a domain name which is a dictionary word or descriptive term, and you are monetizing it to exploit its generic/descriptive meaning, then by filing a trademark application in which you are, by doing so, implicitly claiming that it is not a generic or descriptive term, then you are undermining your best defense in the event of a dispute.

Let me be clear on that third point, in case it is not obvious. Let's say you register "dogfood.tld" and monetize it for dog food. Then you apply for trademark registration. Some trademark owner comes out of the woodwork to your surprise and goes after you. Normally, you would defend yourself by pointing out that it is a generic term for dog food, and that's why you are using it for dog food. But if you are, at the same time, claiming to the USPTO that it is a distinctive trademark, then the question is "Are you lying now, or were you lying to the USPTO" because you can't have it both ways.

The USPTO database is a useful starting point for obtaining helpful information. It is not a magic oracle that answers all your questions.

 

[Hypersot]

That can mean any of several things and, ....

Thank you. Excellent and very informative answer as always.

Going to print that text and place it over my desk

 

[jberryhill]

"If at least three consecutive years have passed since you have used the trademark and, in that time, someone else has begun to use the mark or registered the mark with the USPTO, you will likely not be able to revive your trademark and must instead purchase the rights from this new user."

When were the domain/Trademark "Quick Tax Solutions" abandoned? If it was 2014, then it's probably close to three years.

That is incorrect.

Notice how what you quoted says "if at least three consecutive years have passed since you have used the trademark".

It does not say "three consecutive years since the registration lapsed."

Trademark registrations come up for renewal at intervals of the first six years and successive ten year periods.

Even if you see a "LIVE" record in the USPTO database, the trademark registrant might have stopped using the mark just after the last ten year renewal. In other words, you can see a "LIVE" registration for a mark that was, in fact, abandoned nine years ago.

The other situation is also true. Someone may have allowed their registration to lapse in 2014. They might have continued to use the mark, and not even known their registration had lapsed. In that case, there has been no abandonment of the trademark.

Read again, carefully, what you just quoted. It is refer to how long since you last used the mark, not how long ago the registration may or may not have lapsed - "if at least three consecutive years have passed since you have used the trademark". That doesn't say anything about how long it has been since the registration lapsed, but how long since you last used the mark.

 

[JayDNM]

That can mean any of several things and, ....

Huge thanks for the very descriptive answer to my question.

 

[TampaDomains]

Bidding on godaddy on KellyRipa dot com is 28k now. There was a trademark but it looks to be expired but in any case what would someone do with it that they could pay that much? Try to sell it to Kelly for 100k?

 

[jberryhill]

There was a trademark but it looks to be expired

Kelly Ripa is still very much alive and has substantial rights in that name.

This is precisely the sort of "nonsense domainers believe" which I discussed above.

 

[Ostrados]

Let me be clear on that third point, in case it is not obvious. Let's say you register "dogfood.tld" and monetize it for dog food. Then you apply for trademark registration. Some trademark owner comes out of the woodwork to your surprise and goes after you. Normally, you would defend yourself by pointing out that it is a generic term for dog food, and that's why you are using it for dog food. But if you are, at the same time, claiming to the USPTO that it is a distinctive trademark, then the question is "Are you lying now, or were you lying to the USPTO" because you can't have it both ways.

This part does not make sense

Some trademark owner comes out of the woodwork to your surprise and goes after you.

This is the registered TM owner at USPTO

Normally, you would defend yourself by pointing out that it is a generic term for dog food, and that's why you are using it for dog food. But if you are, at the same time, claiming to the USPTO that it is a distinctive trademark

Why would you claim it is a distinctive trademark? You didn't register the TM at USPTO so the defense that it is generic term is perfectly fine.