Interesting situation with "Dead" trademark

[markfromslo]

I own the a domain name I'll call CoffeeWorld.com for this discussion. When I bought it last year, I checked the trademarks and there was a trademark record for "Coffee World" that had a status of "DEAD", canceled in 2004.

HOWEVER, there still was, and still currently is, the website CoffeeWorld.org that has information about coffee and publishes a physical magazine called Coffee World. For some reason they let their trademark expire.

So, even though there is an active magazine called Coffee World, do I have a trademark issue with CoffeeWorld.com considering they let their trademark expire ?

Could I start my own informational site with my domain name and even go so far as file and get a trademark for Coffee World?

Thanks! This is a very strange situation.

 

[jberryhill]

My dog's license expired last month.

My dog is doing just fine.

 

[markfromslo]

Gee, thanks for the help.

 

[oldratracer]

Just because they "abandoned" does not mean that they gave up their "right" to it... see the USPATO's definition here:

http://www.uspto.gov/web/offices/com/iip/transcriptst_z.htm and again here: http://www.uspto.gov/web/trademarks/workflow/keep.htm

Having giving you that info however... you could choose to file for a TM and if unapposed receive one... then use it and see what happens....your choice...

If you look up the "dead" tm you will find more info about the original TM holder not giving up their rights just because they abandoned the TM.. you have to click on one of the links in the desc. fields...

Hope this helped.....

OldRatRacer

 

[markfromslo]

Thanks, I'll read those links.

Further Question #1: If I file for the trademark (after making a site of course), would they most likely be able to successfully oppose it since they publish a magazine with that name?

Further Question #2: Here is their class and description: "(CANCELLED) IC 016. US 038. G & S: magazines, brochures and pamphlets dealing with topics centered on [subject matter]. " That does not say anything about a web site. Trademarks are pretty specific I think. It would seem a web site of mine and a magazine of theirs would not conflict, right?

Further Question #3: Since the trademark was in DEAD status (understanding your comments about that status) when I purchased the .com, would ICANN give me leeway and not take the domain name from me if these guys challenged me?

 

[jberryhill]

Gee, thanks for the help.

You are welcome.

Even though my dog's government registration has expired, it can still bite you.

The existence of my dog is not determined by whether my dog's registration is up to date.

Is that clear enough?

 

[markfromslo]

You are welcome.

Even though my dog's government registration has expired, it can still bite you.

The existence of my dog is not determined by whether my dog's registration is up to date.

Is that clear enough?

Well, the concept is clear, if it were a dog. Any dog can bite.

The question is whether or not the magazine has a legal leg to stand on. Or, to keep with your analogy, does it have four legs to stand on.

 

[fonzie_007]

If the magazine has been holding the name out as a trademark, then yes, they do. The fact they trademarked the name one, let it expire, but continue using the name seems to me that they still have the right to that TM. If you want to compete with it, file your own TM with the same name. You then would have more of an interesting legal fight.

 

[markfromslo]

I do know one thing: they aren't very bright to let both the trademark and the .com get away from them!

 

[wisconsin]

I do know one thing: they aren't very bright to let both the trademark and the .com get away from them!

Hi slobizman,
While this maybe true, it is not the case! Good luck!

 

[DNQuest.com]

ok, I guess we need to hit someone in between the eyes.....

The TM still exsists..... but the registration does not. See the difference???????

You do not file for a TM, you file to register your TM (or future use of a TM, in case someone wants to get too technical). So it does not matter if the registration has lasped or not, if the TM holder is still using his TM, he still has righs to the TM.

If I may ask, is this about a magazine at all?

 

[dna]

Anyone who likes lawyers never met jberryhill

 

[labrocca]

From what I understand you can have the trademark "abandoned". It costs a fair amount of money to do this. However if successful then you become the trademark holder. I actually inherited ColecoVision TM in this manner. It's a very odd story. I owned the .com and Hasbro basically abandoned the tm. Another company decided challenge the Hasbro tm status. Eventually they did. However since I owned the .com and was actively using the tm for commerce (I was actually selling Colecovision systems and games still) I was actually in line for the tm due to first use. So they paid me off. I learned a lot from my lawyer in that month.

 

[fonzie_007]

From what I understand you can have the trademark "abandoned". It costs a fair amount of money to do this. However if successful then you become the trademark holder. I actually inherited ColecoVision TM in this manner. It's a very odd story. I owned the .com and Hasbro basically abandoned the tm. Another company decided challenge the Hasbro tm status. Eventually they did. However since I owned the .com and was actively using the tm for commerce (I was actually selling Colecovision systems and games still) I was actually in line for the tm due to first use. So they paid me off. I learned a lot from my lawyer in that month.

That had to have been a nice payment to receive.

 

[jberryhill]

Anyone who likes lawyers never met jberryhill

Awww... have you really met me? Do you mean to suggest that not every person on the planet adores me? I'm heartbroken.

Back on topic, it can also happen that my dog can die before the license expires. TM registrations can outlive actual use of the underlying trademark.

 

[robertjr]

jberryhill-

I like you and really enjoy your insight. BUT.... I'm concerned about your dog.

 

[labrocca]

jberryhill-

I like you and really enjoy your insight. BUT.... I'm concerned about your dog.

Why is it the best wisecracks involve JBH?

 

[jberryhill]

She's doing fine:
http://www.johnberryhill.com/Random/photos/photo11.html

 

[fonzie_007]

She's looking like she is having the time of her life...

 

[cache]

1. can we repeat your success to other abandoned TM?
2. from your example, it sounds like the OP can actually steal this TM, am I right?

From what I understand you can have the trademark "abandoned". It costs a fair amount of money to do this. However if successful then you become the trademark holder. I actually inherited ColecoVision TM in this manner. It's a very odd story. I owned the .com and Hasbro basically abandoned the tm. Another company decided challenge the Hasbro tm status. Eventually they did. However since I owned the .com and was actively using the tm for commerce (I was actually selling Colecovision systems and games still) I was actually in line for the tm due to first use. So they paid me off. I learned a lot from my lawyer in that month.