My domain has a dead trademark. Am I safe?

[Greg]

I own a domain name that has a "dead" trademark. I am planning to start developing this domain on a fairly large scale and am wondering if they could re-open the trademark. BTW, the trademark was originally filed in 2000 and then abandoned in 2004, it currently shows as dead.

Thanks in advance for any information you may supply.

 

[jberryhill]

The notations "dead" and "live" in the USPTO database are references to file status.

The USPTO database is not a "database of trademarks", there are a variety of different records there which mean different things.

What matters is whether these people are using the term at issue as a trademark, and not whether some file in the USPTO is active.

What can be illuminating is the reason why this record has that notation, but from the information you've given, there is no way to tell what, if anything, is or is not going on.

 

[AdoptableDomains]

Even if the filed and registered (R) TM is dead and invalid and the filer no longer exists, there could be other TM users that are active through use but not officially registered. There might be valid registered marks in other countries as well.

AS JBerryhill indicated, don't assume that because there's no active Registered TM, means there are no active unregistered but still valid TM's in use.

 

[Premiere]

Sometimes even a dead TM can be used to enforce a TM. So be sure that this name is not active somewhere. If you are serious about going forward and you have no plans to use this name in a manner that would violate the previous TM holder's rights, I would get a trademark lawyer to do a search and discovery for you, and then file a claim if the coast looks clear.

 

[Name Trader]

If you are going to doing anything "on a large scale" you might want to clear any doubts first with a domain/trademark lawyer.

 

[jberryhill]

Well, I thought we'd hear more from the OP.

Is this a registration that was not renewed, or is it an application that was abandoned (and for which there could be several reasons).

When you click on the button that says TARR status, what are the last two or three entries in the chronological list of status notes?

 

[Saku]

hi i got the exact same question .

i recently acquired a domain name that i would like to develop BUT it seems someone was trying to trademark the name years ago but didnt complete the process? Says the trademark is "dead"

my only question ,am i free to develop the name without any problems?or should i drop it

thanks in advance






-------------------------------------------------------------

Standard Character claim: No

Current Status: Abandoned-Failure To Respond Or Late Response

Date of Status: 2001-11-17

Filing Date: 2000-03-18

Transformed into a National Application: No





2001-11-17 - Abandonment - Failure To Respond Or Late Response

2000-09-28 - Non-final action mailed

2000-09-07 - Assigned To Examiner

2000-09-05 - Assigned To Examiner

 

[Dave_Z]

am i free to develop the name without any problems?

That's been answered by the first three posters above.

 

[jberryhill]

That's been answered by the first three posters above.

Not entirely, because a record may be "dead" for a variety of reasons. The original poster hasn't bothered to explain whether he/she is looking at a cancelled registration or an abandoned application.

Saku appears to be looking at something that was an application for registration. The application was refused, and the applicant did not respond.

In these circumstances, it is helpful to know whether the application was a 1A (based on use) or a 1B (based on intent to use). If a 1A is refused on grounds of descriptiveness, for example, then the applicant might argue acquired descriptiveness based on longstanding use. If, however, a 1B is refused based on descriptiveness, then the applicant has nowhere to go - you can't claim "acquired descriptiveness" in a 1B, since it is a term you have admitted not been using as a mark.

Now, in records as old as the one cited by Saku, it is unlikely that the full prosecution history is available in electronic form. For more recent records, one can hit the "TDR" button above the record itself, and get .pdf copies of the application, the office actions, and responses, and get a good handle on why the application was refused.

Of course, one can always use Google to find evidence of whether the applicant is using the term as a mark, apart from whether the term is registered.

 

[Greg]

Sorry for the delay. I just got back in town. This is from Tess, I hope it helps. Thanks for all of the answers so far.

Word Mark xxxx xxxx
Goods and Services (ABANDONED) IC 016. US 002 005 022 023 029 037 038 050. G & S: pens, pencils, posters, decals, notepads, and stickers

(ABANDONED) IC 025. US 022 039. G & S: hats, caps, shirts, sweaters, jackets, sweatshirts, and t-shirts
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76027650
Filing Date April 14, 2000
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition December 12, 2000
Owner (APPLICANT) Ohio State University, The INSTITUTION OHIO 190 North Oval Mall Columbus OHIO 43210
Attorney of Record Joseph R. xxxxxxx
Prior Registrations 1152683;1267035;1643884;2211718;AND OTHERS
Description of Mark "xxxx xxxxx" does not identify any living individual.
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Abandonment Date March 7, 2004

Tarr Status:

Thank you for your request. Here are the latest results from the TARR web server.
This page was generated by the TARR system on 2009-05-24 16:52:56 ET

Serial Number: 76027650 Assignment Information Trademark Document Retrieval

Registration Number: (NOT AVAILABLE)

Mark (words only): xxxx xxxxx

Standard Character claim: No

Current Status: Abandoned: No Statement of Use filed after Notice of Allowance was issued.

Date of Status: 2004-03-07

Filing Date: 2000-04-14

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Register: Principal

Law Office Assigned: LAW OFFICE 106

If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 900 -File Repository (Franconia)

Date In Location: 2004-05-12

LAST APPLICANT(S)/OWNER(S) OF RECORD
1. Ohio State University, The

Address:
Ohio State University, The
190 North Oval Mall
Columbus, OH 43210
United States
Legal Entity Type: INSTITUTION
State or Country Where Organized: Ohio

GOODS AND/OR SERVICES
International Class: 016
Class Status: Active
pens, pencils, posters, decals, notepads, and stickers
Basis: 1(b)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 025
Class Status: Active
hats, caps, shirts, sweaters, jackets, sweatshirts, and t-shirts
Basis: 1(b)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

ADDITIONAL INFORMATION
Lining and Stippling: "xxxx xxxxx" does not identify any living individual.

Prior Registration Number(s):
1152683
1267035
1643884
2211718

MADRID PROTOCOL INFORMATION
(NOT AVAILABLE)

PROSECUTION HISTORY NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown near the top of this page.

2004-05-07 - Abandonment - No use statement filed

2004-04-26 - Assigned To Examiner

2003-09-30 - Extension 5 granted

2003-09-04 - Extension 5 filed

2003-09-08 - PAPER RECEIVED

2003-05-06 - Extension 4 granted

2003-03-06 - Extension 4 filed

2003-03-10 - PAPER RECEIVED

2002-11-02 - Extension 3 granted

2002-09-03 - Extension 3 filed

2002-09-09 - PAPER RECEIVED

2002-03-19 - Extension 2 granted

2002-03-06 - Extension 2 filed

2001-09-25 - Extension 1 granted

2001-09-06 - Extension 1 filed

2001-03-06 - Noa Mailed - SOU Required From Applicant

2000-12-12 - Published for opposition

2000-11-10 - Notice of publication

2000-09-29 - Approved for Pub - Principal Register (Initial exam)

2000-09-26 - Assigned To Examiner

 

[jberryhill]

Okay, Grina, this is a application to register a mark in connection with specific goods and services listed in the application. Now, the application was allowed, but before an intent-to-use application can proceed to registration, the applicant must show use of the mark on the listed goods and services. After several extensions, they never get around to doing that.

But, let's get real here. A Google search on the term indicates that, yes, the term at issue is exclusively and distinctively associated with Ohio State. Indeed, there is no conceivable reason for registering this term apart from knowledge that it is uniquely and distinctively associated with Ohio State.

It's kind of strange that one would even care whether they have a federal registration for a symbol of theirs which they've been using since 1965, and for which there is clearly no reason to register the domain name apart from the reputation connected with it.

 

[Greg]

Thank you for the information. Being a huge fan I couldn't resist registering this. What about a fan site with no related ads?

 

[Domagon]

Perhaps, that one fell through the cracks; it appears they've changed attorneys handling their TM filings.

A similar mark, with the second word being "crunch", was just registered this month...

And furthermore, some of their related marks are listed as "live"; the registrations are being actively maintained...

If they choose to pursue action, it'll likely be a slamdunk for them - a quick google search will clearly illustrate why.

With all that said, you could roll the dice and develop it, wait for them to come to you, and then try to negotiate a price for it ... a 4-figure or even 5-figure settlement is realistic, but comes at the risk of being sued and/or UDRP.

Hosting a non-commercial fan site may be workable ... question you need to ask yourself is it worth the risk, hassles, and your time to develop something of very limited use.

Ron

 

[Saku]

Not entirely, because a record may be "dead" for a variety of reasons. The original poster hasn't bothered to explain whether he/she is looking at a cancelled registration or an abandoned application.

Saku appears to be looking at something that was an application for registration. The application was refused, and the applicant did not respond.

In these circumstances, it is helpful to know whether the application was a 1A (based on use) or a 1B (based on intent to use). If a 1A is refused on grounds of descriptiveness, for example, then the applicant might argue acquired descriptiveness based on longstanding use. If, however, a 1B is refused based on descriptiveness, then the applicant has nowhere to go - you can't claim "acquired descriptiveness" in a 1B, since it is a term you have admitted not been using as a mark.

Now, in records as old as the one cited by Saku, it is unlikely that the full prosecution history is available in electronic form. For more recent records, one can hit the "TDR" button above the record itself, and get .pdf copies of the application, the office actions, and responses, and get a good handle on why the application was refused.

Of course, one can always use Google to find evidence of whether the applicant is using the term as a mark, apart from whether the term is registered.

thanks JBH.....


What i did was contact the lawyer who previously handled the attempted trademark and i was told it was ok to proceed developing the name without worry...so i guess ill move ahead

thanks for your input i really appreciated it .

 

[Premiere]

thanks JBH.....

What i did was contact the lawyer who previously handled the attempted trademark and i was told it was ok to proceed developing the name without worry.

You couldn't possibly have made a smarter move. Good job!