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.

 

[primacomputer]

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.

They let their trademark registration with the office you checked with expire. They may have other trademark registrations in other places. If they are still “trading” while using that “mark” then they no doubt still have a trademark.

Food for thought...
If a dog were sealed in a box with a radioactive trigger that had a 50% change of paying the license fee would the dog be both licensed and unlicensed at the same time?

 

[markfromslo]

in that case, no... they would be reverse hijacking the domain...

Can we explore this just a little bit more. So, if I have a domain name which whose wording is unused and untrademarked at the time I register it, then I just keep it parked, then someone comes along and creates a company or product with that name and trademarks it, that's "reverse highjacking."

But what does that mean, legally? Can I challenge their trademark? Will ICANN NOT force me to hand over the name to them because I had it first? Will ICANN even bother checking this?

And, is there a difference if I merely have the name parked or if it's developed? Shouldn't be since parking names for PPC is a valid business.

 

[jberryhill]

Slobizman,

Your questions go off in fifty different directions.

But what does that mean, legally? Can I challenge their trademark?

No. If you have had asdf.com since 2000, and I came along in 2005 and started selling ASDF brand dog food, I am perfectly entitled to register a trademark for ASDF in connection with dog food. I will not be able to say that you registered the domain name in bad faith, but there is nothing wrong with my registering my trademark for ASDF dog food.

Now, if you have the name parked at PPC, and those PPC results begin to converge on dog food, then you and I are going to have a problem because your use of the domain name has now changed to infringe my trademark - you weren't using it for dog food prior to my trademark, but now you are.

 

[markfromslo]

Yes, discussions often to that; all related though.

Appreciate the detailed answer. it's very clear, except I want to make sure of one thing. You said "Now, if you have the name parked at PPC, and those PPC results begin to converge on dog food, then you and I are going to have a problem..." What if I was always getting dog food ads? A better example would be if the domain were actually descriptive of the ads I receive. For example, if the domain is BowWowDogFood.com and I naturally had always gotten dog food ads that predated the use by the other party, would that then be an infringement?

Slobizman,

Your questions go off in fifty different directions.



No. If you have had asdf.com since 2000, and I came along in 2005 and started selling ASDF brand dog food, I am perfectly entitled to register a trademark for ASDF in connection with dog food. I will not be able to say that you registered the domain name in bad faith, but there is nothing wrong with my registering my trademark for ASDF dog food.

Now, if you have the name parked at PPC, and those PPC results begin to converge on dog food, then you and I are going to have a problem because your use of the domain name has now changed to infringe my trademark - you weren't using it for dog food prior to my trademark, but now you are.