question If a trademark was cancelled in 2007 in USA but not in ....

[WhoaDomain.com]

If a trademark was cancelled in 2007 in USA but not in not in say Germany or Canada. but my "offending" domain is registered in the USA. does this mean I don't have to worry? or should I still?

captain obvious would say "a trademark is a trademark no matter where it is registered or where you are located as a domain registrant."

but let's see what you all say.

Edit: Although I see their USA and other trademarks cancelled and inactive. I did see they have a WO TM (International trademark)?

checked it on wipo.int

why have trademarks specifically in DE,NZ,CA,IL,SG,AU,CH, and something called EUIPO Trademark but then let the USA one lapse and cancel and become inactive?

Is it because of that International Trademark?

is that that all encompassing trademark that covers USA? so doesn't matter then that their USA trademark is inactive and cancelled since their International one is still in play?

I got an exact match for a Car. like registering MustangGT.com (it's not that one.)

why did I reg? because I checked uspto.gov and wipo.int and I guess missed it. the wipo.int showed it but not the uspto.gov one. plus the wipo.int website is a pain to use. very complicated.

found trademark after I tried to search it again.

Very strange this german company did not register this domain ever. I checked hosterstats.com and shows this domain was never registered?

very odd.
this car has been around since 2009

 

[Ategy]

Whether a mark (name/term/brand/slogan/etc) is (1) registered; or (2) has never been "registered"; or (3) cancelled; or (4) inactive; is almost meaningless in terms of telling you if a mark is actually a legally protected "trademarked" or not.

The only thing registration does is help prove around when the registration holder started to use the mark .. registration then makes it significantly easier to prove their rights ... but it does NOT give them any more or fewer trademark rights to the mark whether officially registered or not. (The only exception being that you can register a mark up to 2-3 years before using it and still have the same protections as if you were using it)

Actual USAGE in commerce is the only thing that effectively counts. If your commercial operations are limited in geographic scope then so is your trademark. Although with the Internet being "international" a company can claim their trademark to be global if they have customers all over the world (obviously this is where it gets more complex).

You can use the term "Mustang" to sell anything you want anywhere as long as it's not related to the same trademark class (Vehicles I'm assuming .. although they could also be protected for clothing if they are selling baseball caps with their logo for example).

That being said .. when it comes to domains and UDRPs, there is also a line at some point where you could be seen as targeting a trademark (again, whether it's registered or not) if that mark is too unique or specific. In this case I'd think if you registered MustangGT.com it certainly would be possible and even probable that a judge or panellist finds that you specifically targeted that brand to imply affiliation as opposed to you randomly coming up with that name for a future restaurant for example. So you do have to consider that there is a line when it comes to reasonability .. because there are instances where something technically ok might be still found to be wrong. So..

Naming your restaurant "Mustang" is ok.

Naming your restaurant "MustangGT" technically ok .. but likely will be found guilty for holding the domain.

Naming your restaurant "MustangGT" and holding the domain possibly ok if your initials are GT or if it's in the "G.reater T.oronto" region for example.

That being said .. if you are simply holding the domain and not actually using the mark ACTIVELY IN COMMERCE .. then you're going to have a hard time justifying holding something so specific of a trademark of a relatively well known brand.


If the car name is a common name or word (Mustang) then by all means grab the domain .. but if it's more of a unique brand (MustangGT) then I wouldn't touch it.

If they are still doing business in any way inside the USA then they still theoretically have rights in the USA to the trademark regardless as to if it's expired or not.

There are plenty of loopholes and exceptions when names are more specific and unique .. more importantly different judges and UDRP panellists each potentially have different threshold levels of what they might consider unique enough or not.


At the end of the day ... your question is totally meaningless without knowing the specifics of the actual name and the business specifics of the potential trademark holder.


More importantly ..
Just because a mark has 100, 1 or even ZERO trademark registrations, does not at all tell you the real story as to whether a domain is "safe" or not.


* I AM NOT A LAWYER NOR AM I A TRADEMARK SPECIALIST SO DO YOUR OWN RESEARCH BEFORE PROCEEDING EITHER WAY *

 

[WhoaDomain.com]

Whether a mark (name/term/brand/slogan/etc) is (1) registered; or (2) has never been "registered"; or (3) cancelled; or (4) inactive; is almost meaningless in terms of telling you if a mark is actually a legally protected "trademarked" or not.

The only thing registration does is help prove around when the registration holder started to use the mark .. registration then makes it significantly easier to prove their rights ... but it does NOT give them any more or fewer trademark rights to the mark whether officially registered or not. (The only exception being that you can register a mark up to 2-3 years before using it and still have the same protections as if you were using it)

Actual USAGE in commerce is the only thing that effectively counts. If your commercial operations are limited in geographic scope then so is your trademark. Although with the Internet being "international" a company can claim their trademark to be global if they have customers all over the world (obviously this is where it gets more complex).

You can use the term "Mustang" to sell anything you want anywhere as long as it's not related to the same trademark class (Vehicles I'm assuming .. although they could also be protected for clothing if they are selling baseball caps with their logo for example).

That being said .. when it comes to domains and UDRPs, there is also a line at some point where you could be seen as targeting a trademark (again, whether it's registered or not) if that mark is too unique or specific. In this case I'd think if you registered MustangGT.com it certainly would be possible and even probable that a judge or panellist finds that you specifically targeted that brand to imply affiliation as opposed to you randomly coming up with that name for a future restaurant for example. So you do have to consider that there is a line when it comes to reasonability .. because there are instances where something technically ok might be still found to be wrong. So..

Naming your restaurant "Mustang" is ok.

Naming your restaurant "MustangGT" technically ok .. but likely will be found guilty for holding the domain.

Naming your restaurant "MustangGT" and holding the domain possibly ok if your initials are GT or if it's in the "G.reater T.oronto" region for example.

That being said .. if you are simply holding the domain and not actually using the mark ACTIVELY IN COMMERCE .. then you're going to have a hard time justifying holding something so specific of a trademark of a relatively well known brand.


If the car name is a common name or word (Mustang) then by all means grab the domain .. but if it's more of a unique brand (MustangGT) then I wouldn't touch it.

If they are still doing business in any way inside the USA then they still theoretically have rights in the USA to the trademark regardless as to if it's expired or not.

There are plenty of loopholes and exceptions when names are more specific and unique .. more importantly different judges and UDRP panellists each potentially have different threshold levels of what they might consider unique enough or not.


At the end of the day ... your question is totally meaningless without knowing the specifics of the actual name and the business specifics of the potential trademark holder.


More importantly ..
Just because a mark has 100, 1 or even ZERO trademark registrations, does not at all tell you the real story as to whether a domain is "safe" or not.


* I AM NOT A LAWYER NOR AM I A TRADEMARK SPECIALIST SO DO YOUR OWN RESEARCH BEFORE PROCEEDING EITHER WAY *

Thanks and I appreciate the extensive answer.very informative.

I agree with everything I guess I just wanted to make sure my concern was correct. may I pm you the name? You'll be surprised. I know I was. This car company isn't that huge but it's been around for decades.

 

[Ategy]

No problem .. overall 1/3 of domainers are too paranoid when it comes to trademarks .. while ironically another 1/3 of domainers are not nearly paranoid enough as they should be .. lol. Of the remaining 1/3 .. many don't even know enough to understand the grasp of what a trademark actually is .. and the rest are in the Goldilocks zone of trademark understanding!

may I pm you the name?

Sure .. but always remember that forum PMs are effectively data and information stored in a database on servers outside of your control! When it comes to legal issues and private information you need to remember that no forum PM is ever effectively private.

That being said .. lol .. I doubt it would ever go that far .. so go ahead if the above doesn't make you paranoid!

 

[RevolutionaryDomains]

If a trademark was cancelled in 2007 in USA but not in not in say Germany or Canada. but my "offending" domain is registered in the USA. does this mean I don't have to worry? or should I still?

captain obvious would say "a trademark is a trademark no matter where it is registered or where you are located as a domain registrant."

but let's see what you all say.

Edit: Although I see their USA and other trademarks cancelled and inactive. I did see they have a WO TM (International trademark)?

checked it on wipo.int

why have trademarks specifically in DE,NZ,CA,IL,SG,AU,CH, and something called EUIPO Trademark but then let the USA one lapse and cancel and become inactive?

Is it because of that International Trademark?

is that that all encompassing trademark that covers USA? so doesn't matter then that their USA trademark is inactive and cancelled since their International one is still in play?

I got an exact match for a Car. like registering MustangGT.com (it's not that one.)

why did I reg? because I checked uspto.gov and wipo.int and I guess missed it. the wipo.int showed it but not the uspto.gov one. plus the wipo.int website is a pain to use. very complicated.

found trademark after I tried to search it again.

Very strange this german company did not register this domain ever. I checked hosterstats.com and shows this domain was never registered?

very odd.
this car has been around since 2009

Sometimes information is readily available right here on NP with a simple search.

The link below may help...gl

https://www.namepros.com/threads/dead-trademarks.1005061/

*Pay special attention to John's posts, not the random member posts...imo.

 

[jberryhill]

Just because a mark has 100, 1 or even ZERO trademark registrations, does not at all tell you the real story as to whether a domain is "safe" or not.

Winner, winner, chicken dinner. Trademark registration data is only part of a larger picture.

"My blood pressure is 116 over 80, do I have cancer?"

That's about what most these questions sound like.