question Is it safe to buy a domain but has a conflict with an old trademark ?

[Qezdabo]

I want to buy a domain but I saw it has a conflict with an old trademark. I opened their original domain(different slightly from what i want to buy), and it seems like they are not using it(I don't think they own the domain anymore, according to web archive. They owned it until 2021. Now it just shows a parked domain with no relation to them at all).

But they still have a linkedin profile with hundreds of ®. Never saw a linkedin profile with that many ® in the description. I think it's just an old page that still lives.

Their address on google map doesn't show anything.

It's a generic phrase, two words that can be found anywhere. And the trademark is for realestate. I think I can use it for other things.

Also, the last document that was received from the trademark office is from 2011, with this text:

The registration shall remain in force for 10 years, except that the registration shall be canceled for failure to file an Affidavit of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. Sec. 1058, at the end of each successive 10-year period following the date of registration.

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but the cancelled date is in 2015.

 

[Altetra]

I heard that 5 years is good for a dead/abandoned TM, but unsure exactly, so you might be safe to proceed.

 

[Gabriel360]

If you intend to use the domain name for your own business, consult a lawyer.

If you intend to buy for resale, why risk it?
There are plenty of other domain names with no potential legal baggage. Buy those.

Plus, a dead TM registration does not mean a dead TM. Common law TM says they still have rights even without an active TM registration.

Plus, having a lot of ® on their LinkedIn profile suggests an entity that is likely to be litigious.

 

[fka1080405]

A registered trademark doesn't provide blanket ownership over a term nor is a registered trademark necessary to challenge the registration of a domain name. A registered trademark is helpful when trying to challenge a domain name registration because it provides very clear evidence that there is usage of the term with a paper trail but trademark law is more complicated.

A trademark must be defended for it to have much hope of being treated as ownership over a term, i.e: you cannot register a trademark for a term and then choose only to pursue violators with deep pockets. If you were to register a domain name containing the term "lego" you would almost immediately receive a cease and desist from The Lego Group because they know that they need to be very proactive about protecting their trademark, otherwise it is at risk.

If the trademark's registration has lapsed and the trademark is dictionary words and the registrant is operating in a different business segment and you're comfortable defending yourself against a potential complaint (i.e: if they file a UDRP then you are happy to reply with a spirited defence) then there is no reason to be worried.

The reverence the legal system has for trademarks (which is formalised as registered trademarks but applies to unregistered trademarks too) comes from how much of an asset the recognition of that trademark can be, and a competitor using that trademark without permission is realising unearned value at the expense of the entity that built the trademark's value (the concept is called "passing off").

As long as you're not passing off, there's little to worry about. One caveat is that litigation can often be pursued even when it's hopeless, i.e: some businesses think they have far more ownership over certain terms than they actually do. If a business is willing to burn money pursuing you without justification, you may waste time (and money) defending yourself. That's a risk with any form of business though.

 

[Qezdabo]

I'm not from the US. If they file a UDRP, can I just ignore them and let the us justice system work on its own ? Or is it automatically a win for them if I ignore them ?

I don't plan on getting lawyers for this domain.

 

[fka1080405]

There is no obligation to reply to a UDRP complaint but their decision will be obeyed by your registrar and there is a small chance that you get unlucky with the panel and they make a bad call without the facts, so it is best to respond to the complaint by laying out the facts as you see them (you do not need a lawyer to do this). The UDRP process is very much in favour of the domain name owner though, it's almost impossible to take a domain via UDRP so a non-response is not a problem. You can read about the process here: https://www.wipo.int/amc/en/domains/guide/

Separately from the UDRP process, they could choose to pursue you in a court of law, and that would be more complicated -- it is hard to provide any meaningful insight into that. If you're averse to any form of litigation, it would be a mistake to choose this domain (although it would also be a mistake to conduct business online).

 

[Qezdabo]

Thanks for the replies. I think I'm going to buy it because it's dictionary words, and I'll use it for personal things. Not reselling.

 

[Makram]

I want to buy a domain but I saw it has a conflict with an old trademark. I opened their original domain(different slightly from what i want to buy), and it seems like they are not using it(I don't think they own the domain anymore, according to web archive. They owned it until 2021. Now it just shows a parked domain with no relation to them at all).

But they still have a linkedin profile with hundreds of ®. Never saw a linkedin profile with that many ® in the description. I think it's just an old page that still lives.

Their address on google map doesn't show anything.

It's a generic phrase, two words that can be found anywhere. And the trademark is for realestate. I think I can use it for other things.

Also, the last document that was received from the trademark office is from 2011, with this text:

The registration shall remain in force for 10 years, except that the registration shall be canceled for failure to file an Affidavit of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. Sec. 1058, at the end of each successive 10-year period following the date of registration.

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but the cancelled date is in 2015.

Show attachment 274963

Buying a domain that conflicts with an old trademark is generally ---NOT SAFE. But here are the key points to consider: If the trademark hasn't been renewed or maintained with a Section 8 filing after 10 years, it's likely abandoned...especially if there's no current commercial use and the original site is inactive. However, even if the domain looks generic and the trademark is real estate-specific, it’s still wise to consult a trademark attorney before buying or using it commercially to be safe....

 

[BrandEntrance.com]

"And the trademark is for realestate. I think I can use it for other things."

And that is ok to do.

 

[DediRock]

Sounds risky if it’s tied to an old trademark, even if it's unused. Have you checked USPTO or a trademark attorney for peace of mind?

 

[fzmuhammad]

I want to buy a domain but I saw it has a conflict with an old trademark. I opened their original domain(different slightly from what i want to buy), and it seems like they are not using it(I don't think they own the domain anymore, according to web archive. They owned it until 2021. Now it just shows a parked domain with no relation to them at all).

But they still have a linkedin profile with hundreds of ®. Never saw a linkedin profile with that many ® in the description. I think it's just an old page that still lives.

Their address on google map doesn't show anything.

It's a generic phrase, two words that can be found anywhere. And the trademark is for realestate. I think I can use it for other things.

Also, the last document that was received from the trademark office is from 2011, with this text:

The registration shall remain in force for 10 years, except that the registration shall be canceled for failure to file an Affidavit of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. Sec. 1058, at the end of each successive 10-year period following the date of registration.

---

but the cancelled date is in 2015.

Show attachment 274963

That’s an interesting case — thanks for sharing the details.


From what you've described, it sounds like the trademark may have lapsed or is inactive, especially if:

• The last recorded activity was in 2011.
• No Section 8 (Continued Use) filing is visible after the 10-year mark.
• Their old domain isn’t in use anymore.
• The business has little to no presence (dead Google Maps location, outdated LinkedIn, etc.).