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question Is this considered acting in bad faith?

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beginnnerdomainer

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I registered an expired domain from a company with reported $7.7m revenue. I didn't know until after I registered it. The company had the domain in 2015-2016 and had it trademarked but the trademark is now dead. They still sell products (I think) with the trademarked name. If I reach out to them and inquire if they want to buy it, would this be acting in bad faith? What if I reach out to their competitors and tell them it's an expired domain that has been trademarked before by a big company which adds credibility to the domain, is this acting in bad faith?
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
If the trademark is dead , you have your answer
 
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Hi @beginnnerdomainer

One thing I might suggest is to not assume that some anonymous person who provides an answer to what may actually be a complicated question, knows what they are talking about.

Whether a trademark registration has expired is a different question from whether someone still has a trademark.

They still sell products (I think) with the trademarked name.

It might be a good idea to reach some clarity on whether they still actually use the mark. It seems like it would be relatively simple to find out how you would go about buying those products.

I registered an expired domain from a company with reported $7.7m revenue. I didn't know until after I registered it. The company had the domain in 2015-2016

That's a little vague as well. Are you saying that the domain name was unregistered since 2016 and you have just registered it, or are you saying that they had it until 2016 and it has since been registered by some other registrant(s) who recently dropped it?
 
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If I reach out to them and inquire if they want to buy it, would this be acting in bad faith?

If they let the domain name go in 2016, and they also did not renew their trademark registration, and they are no longer making products by that name, I'm kind of curious why one would think they'd want to buy it in the first place?
 
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Hi @beginnnerdomainer

One thing I might suggest is to not assume that some anonymous person who provides an answer to what may actually be a complicated question, knows what they are talking about.

Whether a trademark registration has expired is a different question from whether someone still has a trademark.



It might be a good idea to reach some clarity on whether they still actually use the mark. It seems like it would be relatively simple to find out how you would go about buying those products.



That's a little vague as well. Are you saying that the domain name was unregistered since 2016 and you have just registered it, or are you saying that they had it until 2016 and it has since been registered by some other registrant(s) who recently dropped it?
For sure you known more than me about the matter
I simply thought that if a trademark is dead , no one has rights on it anymore.
My mistake.

That said , I find you kinda rude
You can simply explain to him why and how it is without calling “anonymous” other people

Have a nice day
 
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Hi @beginnnerdomainer

One thing I might suggest is to not assume that some anonymous person who provides an answer to what may actually be a complicated question, knows what they are talking about.

Whether a trademark registration has expired is a different question from whether someone still has a trademark.



It might be a good idea to reach some clarity on whether they still actually use the mark. It seems like it would be relatively simple to find out how you would go about buying those products.



That's a little vague as well. Are you saying that the domain name was unregistered since 2016 and you have just registered it, or are you saying that they had it until 2016 and it has since been registered by some other registrant(s) who recently dropped it?
Sorry, let me give a bit more context.
Application Filing Date: Aug. 10, 2015
Date Abandoned: Sep. 07, 2016

The domain expired a few days ago and was not renewed. I used the wayback machine and in 2015-2016 the link led to a suspended page. In 2018 it linked to HugeDomains and appeared for sale. In 2024 there is a lander page. Ultimately the domain expired a few days ago and I registered it. So it seems the domain switched hands a few times throughout the years, but I'm not sure.

When I search the trademark, it shows the product still listed on their site, but there is no "buy now" page or cart. Only a "request quote" page. Not sure if it's still active or outdated so that's why I'm not sure if they still sell the product. The product still has a TM next to the previous trademark on their product. I'm assuming they still sell it because of the "request quote" page that leads to contact sales form you can fill out.

If they let the domain name go in 2016, and they also did not renew their trademark registration, and they are no longer making products by that name, I'm kind of curious why one would think they'd want to buy it in the first place?

Because they still have product listed on their pages with the trademarked name. And because I'd assume they wouldn't want competitors to have access to it and potentially take away from their revenue as it is a pretty niche product.
 
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I just checked their "discontinued products" section and the product in question is not listed there so it seems they are indeed still selling the product.
 
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Personally, I would not approach them. Optics are not good even if the trademark was abandoned.

Price it, list it, put up a lander and wait.

If it has value someone will eventually buy it.
 
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Personally, I would not approach them. Optics are not good even if the trademark was abandoned.

Price it, list it, put up a lander and wait.

If it has value someone will eventually buy it.
Ahh so they abandoned their trademark meaning they never had it to begin with? It seem they did indeed abandon their application and it was never registered. Then why do they have "TM" next to the product name that they filed a trademark for? Isn't that acting in bad faith by lying that the product is trademarked?
 
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Ahh so they abandoned their trademark meaning they never had it to begin with? It seem they did indeed abandon their application and it was never registered. Then why do they have "TM" next to the product name that they filed a trademark for? Isn't that acting in bad faith by lying that the product is trademarked?

This has nothing to do with the domain name.
 
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May not fit this situation but just bc a trademark expired doesnt mean its fair game. Not fair game until you see a record in the trademark database saying its cancelled. Unless it says cancelled, you're not in the clear to use.
 
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That said , I find you kinda rude
You can simply explain to him why and how it is without calling “anonymous” other people
:xf.rolleyes: As a newbie you should know who is who here. You just berated one of the longtime and best domain name lawyers in the domaining industry. You won't find any other lawyer giving as much spot-on and free domain advice. smh.
 
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Read this and let me know if you have any further questions:


https://tsdr.uspto.gov/documentview...=OOA20160304135315&linkId=2#docIndex=1&page=1

“Applicant’s mark, “FLUOROSENSE” is an intentional misspelling of the word “fluorescence,” and is therefore also merely descriptive of applicant’s goods. In addition, the words “FLUOROSENSE” and “fluorescence” are phonetic equivalents. A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding “URBANHOUZING” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j).”
 
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:xf.rolleyes: As a newbie you should know who is who here. You just berated one of the longtime and best domain name lawyers in the domaining industry. You won't find any other lawyer giving as much spot-on and free domain advice. smh.
Hey
I surely know that
I’m not questioning his Knowledge , I would never do that. He probably is a couple of galaxies ahead.
It’s just that I don’t like his tone , that’s it.
Let me explain : it would have been more than sufficient to point out that things are not the way i said , instead of calling me anonymous.
That was simply unnecessary

that said, my bad
Have a nice day
 
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Hey
I surely know that
I’m not questioning his Knowledge , I would never do that. He probably is a couple of galaxies ahead.
It’s just that I don’t like his tone , that’s it.
Let me explain : it would have been more than sufficient to point out that things are not the way i said , instead of calling me anonymous.
That was simply unnecessary

that said, my bad
Have a nice day

But you are anonymous.
 
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Let me explain : it would have been more than sufficient to point out that things are not the way i said , instead of calling me anonymous.
That was simply unnecessary

I read it more as a fore- than post-warning.

Anyway, when the time comes, I'd like to be called an amateur actor in Bad Advice Theater, please. :-D
 
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As are you

I'm thinking that maybe you don't know what "anonymous" means, and you believe it is an insult. Kyle Tully is not anonymous. That's his name. Using his name, and his interest in domains, you can pretty much narrow down who he is on other social media etc. Now, unless you are known as "the" Yanosh, which I understand is otherwise a surname, an Eastern European variant of my own first name, etc., then it's not as if anyone is going to know the person behind the postings.

That has an unfortunate consequence in situations where someone is asking a question that, in a worst case scenario, could get them into a lot of personal trouble if they get bad answers.

For example, if someone said "hey, I have a sore throat" and some rando on a message board says "drink drain cleaner" and the person is poisoned, then fortunately, that rando is never going to be held accountable for being irresponsible and, yes, rude to that person by giving them flippant advice.

So, I have on many occasions here suggested that taking advice from Rando4u on the internet is chancy.

One of the hallmarks of bad advice is that it is simple, short, and easy to understand.

But that relates to another point here. You could come back and say "Oh, but there's a bunch of people named Kyle Tully on Linkedin" or something like that.

Well, yes, there are, but you have to use some common sense and what you already know in order to figure out which one, unless the profile picture doesn't help you.

I'm not anonymous either, as my name is J. Berryhill, and I am certainly rude, sarcastic and a horrible human being. I believe Namepros has an ignore feature, and I urge you to use it if you don't find my idea of humor to be your cup of tea. I post on Namepros for entertainment and, in general, do not owe anyone my time or attention concerning what I have otherwise done for the past, oh, thirty years, to make a living after a change of careers from engineering.

And THAT brings us to the point that there are more people named Kyle Tully than there are US trademark applications which were filed on Aug. 10, 2015 and abandoned on Sep. 07, 2016.

First off, those two dates right there should tell you that we are talking about an application which never made it to registration in the first place. The initial term of registration of a mark in the US is six years. So, if the application was abandoned within 13 months, that means it was never a registered mark in the first place.

And, incidentally....

Unless it says cancelled, you're not in the clear to use.

....no, abandoned applications are "cancelled", because they were never registered in the first place.

Using the same sort of reasoning by which we can easily determine Kyle Tully not to be anonymous, if we apply those two dates to the "field search" feature of the new USPTO trademark search system, we get exactly two records of abandoned applications.

For those folks who still can't get off of the idea that the USPTO is some "database of trademarks" as opposed to a database of a subset of trademarks for which people filed applications to register them, then I have to say that the general search features of the newer system are an absolute disaster. However, if you are decent at Boolean logic or Unix regular expressions, then the field tag search is better than it used to be, and it allows you to search by a combination of any data points in the record, such as:

"FD:20150810 AND AD:20160907"

...which are the filing date and abandonment date in question.

Screenshot 2024-10-26 at 9.21.29 AM.png



Now, I'm pretty sure we aren't talking about the one on the left as a domain name, so that leaves one unique possibility.

I hope that clears up the difference between whether something is "anonymous" or whether a data point uniquely identifies something or someone.

Also, "anonymous" is not an insult anyway. Technically, I should use "pseudonymous" since people here tend to have pseudonyms as handles, but I find that stretching the limits of people's vocabularies doesn't make me well understood.

Now, as long as we are here, it may be worth discussing the kind of information one can, and can't, get from a trademark record. The really laudable part of the OP, and something everyone should do, is that instead of looking at a record in a government database and basing a conclusion on that, he had the chops to go look to see if the applicant for the potential mark is still actually using it.

That's a brilliant move. As I have discussed many times, if my city requires me to renew my dog license every five years, I might let that license lapse, but I still have a dog. Likewise, my dog might die and I still have a valid dog license. Whether I have a valid dog license is actually a different question than whether I have a dog. Trademark registration works much the same way. You can have a trademark and no registration, and you can have a registration and no trademark. That is the key to beginning to understand the utility of USPTO (or other) database information and its limits. It is a tool, not a magic oracle.

Looking deeper into the record here, you can then navigate to this screen:

https://tsdr.uspto.gov/#caseNumber=...TION&caseType=DEFAULT&searchType=statusSearch

Screenshot 2024-10-26 at 9.29.26 AM.png


Two things are of note here. The first, obviously, is that it says the application was abandoned due to failure to file an acceptable response to an Office action. Now, sure, that could mean a lot of things, but also notice that the "attorney of record" appears to be someone in the marketing department who, quite possibly, didn't really have a good idea of what they were doing in the first place. (and, to make a long story short, they didn't)

To drill even DEEPER on what happened, you can click on the "documents" tab, and access the entire file history of the application:


Screenshot 2024-10-26 at 9.32.05 AM.png


Each entry is a clickable link to a piece of correspondence in the application - the original application, the specimen of use (since this was not an intent-to-use application) an office action, a response, and then a final office action since the response didn't overcome the objections in the action.

Skipping to the end, brings us to the document noted above, in which a refusal based on descriptiveness was maintained.

The devices are fluorescence meters and the proposed mark is FluoroSense, which I think is pretty clever. The problem is that the person handling the application (a) didn't do a good job of explaining that "fluorescence" is not directly descriptive of a piece of equipment, (b) didn't even try to establish acquired distinctiveness by continuous, longstanding, substantially exclusive use, and (c) didn't take the final alternative of amending to the Supplemental Register in order to maintain a deterrent presence in the database UNTIL they could come back again and try for a claim of acquired distinctiveness.

Now, if that sounds like a lot of boring, detailed and hard-to-understand crap, you are absolutely right. The problem is that it is all relevant to trying to understand the OP's situation - and we have only finished scratching the surface before we can really dig into the analysis...

...but the grits are ready, and I'm going to have breakfast. Maybe I'll come back later on this one, but there's a reason these things can take time and expertise to sort out, and require more than flippant offhand uninformed nudges in the wrong direction, even if it is a "simple question".
 
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I don’t need to ignore you , as I find your advice very useful.
Speaking of your rudeness , I’m still not a great fan of it.
But I think probably different people have a different perception of the same thing based on themselves and that’s it.
As for my nickname , great guess on it being European.
Have a nice day
 
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Are you saying that you are not actually Turgon, King of Gondolin.

Speaking of your rudeness , I’m still not a great fan of it.

Yeah, well, I'm a lot nicer when I get paid for working, so think of it as my "fee". Not that it pays my bills or anything like, you know, those occasions when someone who is trying to make money thinks that relevant expertise experience and insight are actually worth something.

If you think I'm rude when I'm being helpful, wait until you get a load of my colleagues when they are out to get you. But I digress... I have to wrap this up since the weather is good and I want to get a bike ride in today.

Anyway, there's a difference between commentary that has identifiable people behind it, and people on the internet who would just as soon encourage others to eat detergent pods.

So far in "how much work and thought it really takes to actually analyze these kinds of questions", we have established that there is a company that makes a thing, calls it by a name, and had one of their marketing people do a less than stellar job of trying to register that name as a trademark quite a few years ago. From what can be gathered on the internet, they still sell the thing and they still call it by that name.

Now, the trademark application was refused as allegedly "descriptive" of the thing. It wasn't refused as "generic" for the the thing. So, on the one hand, you do have a statement from the authoritative US government agency to the effect that the name does not function as a trademark, and you have an apparent acquiescence by the maker of the thing in that statement. Certainly, they didn't challenge it.

On the other hand, another facet of US trademark law is that a descriptive term can become distinctive through continuous, longstanding exclusive use, such that consumers in the relevant market recognize the name as distinguishing the source origin of the goods. My favorite tired example is that if I refer to "American Airlines" most people in the US travel market will not think that I am collectively referring to airlines in America as a group, like United, Delta, JetBlue, and so on. Most people will assume that "American Airlines" is a reference to one airline in particular, because that phrase, while otherwise a descriptive term, has become exclusively associated with that one airline, because they have been doing it since 1939 and have become quite successful at it.

That's what we call "acquired distinctiveness". You can mix coca and cola with phosphoric acid, sugar and carbonated water, but the one company that's been doing it since 1886 is pretty well known for that, so you'd better pick another name than the obvious one. In fact, "Coca-Cola" was challenged as merely descriptive in court in 1910, and they won.

To determine whether a claimed mark - i.e. not a registered mark but something someone sticks "TM" next to in order to signal "whatever YOU think, WE think its our mark" - has acquired distinctiveness is a factual question, not a legal question, and it really depends on the market in question.

And so, we come to the Fluorosense handheld fluorometer:


Screenshot 2024-10-26 at 12.05.28 PM.png


You can determine the likely presence of various chemical agents on the basis of measuring fluoresence, and these folks came up with kind of a clever name for their device. However, the USPTO took the position that since the name was similar to the physical property it measures, and because the person dealing with the application wasn't well versed in what they were doing, it didn't end well.

Really, the application itself is a good illustration of how well it works out when someone says, "Why pay an attorney, you can do it online yourself" which is true. You can probably cut out your infected appendix on your own with a pocket knife too, and I wouldn't doubt that people have successfully done that. But these things can appear deceptively simple.

One thing the trademark application tells us, by including a specimen of use, is that they've been making and selling these things for a really long time. Typically, the USPTO will accept a declaration that 'we've been selling this thing for five years on a continuous and substantially exclusive basis' as good enough evidence of acquired distinctiveness.

The problem is that I am not much of a relevant customer in the field of handheld fluorometers, so I don't know whether, in their market, people understand this alleged mark to refer exclusively to their stuff. One thing that can be useful to check is whether there's been any trademark litigation involving the company, which I would normally do, but I don't feel like it because I'm, you know, rude.

But what I can say is that using the Google Test, which I've talked about before, to do a casual look at how this spelling in particular is used, it sure looks like the alleged mark is strongly and consistently associated with this particular company's product - including a lot of third-party references which indicate this product in particular.

You can draw whatever conclusions from that you want.

The other thing in general is that this company makes a range of different products which it sells under different product names and, like most vendors of specialized equipment, probably aren't interested in running umpteen different websites, sets of email addresses, and so on, for every doodad they manufacture. Most likely if the name was important to them, they'd have hung onto it.

On the other hand, my next UDRP decision is going to involve a situation where the Complainant didn't renew their domain name back in 2013, and has decided eleven years later that they want it back, so stay tuned to see how that one pans out.

You might wonder "Why all the detail?" It's important to understand that a "simple question" may not have a simple answer. It's really easy to ask "how do magnets work", and I can say after a shedload of technical education and research that answering that question is a beast. So, once in a while I'll do this kind of thing as an illustration of how much work actually goes into analyzing a question like this when someone thinks "What a rip off to pay a lawyer a consultation fee to get a simple answer." You want simple answers, that's fine, but if you end up eating a detergent pod, user BasedPepe246 on StuffToEat.com isn't going to be around to blame.

Anyway, the day is still young, and I have puppies to kick and children's balloons to pop. So have a good one.
 
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Buying name and either sell the name to the owner of competitor is bad regardless of it's trademark or not.
If you don't like what people will do to you then don't do it to people.
 
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"Why pay an attorney, you can do it online yourself" which is true. You can probably cut out your infected appendix on your own with a pocket knife too, and I wouldn't doubt that people have successfully done that.
because I'm, you know, rude
Engineer, attorney, surgeon... how much do you charge for the removal of the appendix?
 
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