Dominion.Domains

Name with expired trade mark

Discussion in 'Legal Discussion' started by Kuffy, Jun 13, 2018.

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  1. Kuffy

    Kuffy Name Stag VIP

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    I've just bought a name for $1, and it looks as if it could be an interesting experiment. It's a generic 3 word .com, and the phrase has an expired trademark on it. The name is also registered in a few other extensions. One of the sites is claiming a trade mark for the phrase, but I can't find an active registration. The name has got some age, and my details record continuous use since 2004, and that predates any of the other uses.

    I think I'm going to develop it and see waht happens. The phrase is industry specific btw.
     
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    It's not clear what of many things you might mean by "expired trademark".

    When did the party in question stop using the claimed mark?
     
  3. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    So? Assuming that you checked all 100 or so jurisdictions where one might register a mark, is there a reason to believe that their use does not qualify for some reason as a common law mark (e.g. lack of distinctiveness, generic, not a common law jurisdiction etc.)?
     
  4. Kuffy

    Kuffy Name Stag VIP

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    Thanks for the reply.

    The phrase is "big win slots"

    I checked the UK register, and there is nothing there, and I checked wipo at http://www.wipo.int/branddb/en/
    which says that it is abandoned.

    This is the uspto page for the application
    http://tsdr.uspto.gov/#caseNumber=85525065&caseType=SERIAL_NO&searchType=statusSearch

    I've put a casino style landing page on the site. When I get a chance, I'll have a look at the casino sites before trying to promote anything. "Big Win" appears to be a brand name for a range of on-line slot machine games, and it may be that the site will need to be restricted to promoting casinos using those machines.
     
  5. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Okay, so here's why I sound like I'm grumpy when people post things about "stuff I found in a database" as opposed to going out into the real world (i.e. Google) and getting a feel for what is happening in terms of use etc.

    This is not an "expired" anything. So where you say:

    "the phrase has an expired trademark on it"

    ...that doesn't actually come close to describing the circumstances of what it is you are looking at, and it's why I kind of just roll my eyes at discussions here among domainers about "look it up at the USPTO".

    I'm not going to give you a legal opinion on your particular circumstances. However, this is a useful thread for pointing something out about why, when people post things about what they did or did not find in a database, I simply don't take what they are saying at face value.

    So, let me at least tell you what you are looking at.

    What you are looking at is an APPLICATION which someone filed to register "BIG WIN SLOTS" as a trademark for:

    "Computer game software for use on mobile and cellular phones; computer software for wireless content delivery; electronic game software for handheld electronic devices; electronic game software for wireless devices"

    The USPTO never allowed that application to proceed to registration. What actually happened here (if you go to that link and click on the "documents" tab) is that the USPTO refused to register it, the applicant submitted some arguments, and the USPTO wasn't persuaded by those arguments.

    But it is important to know WHY the USPTO refused that application. The final refusal is here:

    http://tsdr.uspto.gov/documentviewer?caseId=sn85525065&docId=OOA20131030105211#docIndex=1&page=1

    Registration of the applied-for mark has been refused because of a likelihood of confusion with the mark in U.S. Registration No. 4296330. Trademark Act Section 2(d), 15 U.S.C., §1052(d); see TMEP §§1207.01 et. seq.


    Applicant has applied to register the mark BIG WIN POKER in standard character form for use on “computer game software for use on mobile and cellular phones; computer software for wireless content delivery; electronic game software for handheld electronic devices; electronic game software for wireless devices.”


    The registered mark is BIG WIN VEGAS in standard character form for use on “software and firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output.”

    Applicant argues that the goods of the parties are different, the channels of trade are different, and the marks are dissimilar in overall commercial impression. The examining attorney has carefully reviewed applicant’s arguments and/or amendments in favor of registration but has found them to be unpersuasive for the following reasons.

    ...and it goes on in some detail.

    What's kind of goofy is that the Examining Attorney appears to have copied text from a co-pending application for "BIG WIN POKER", but that's not important. (if you search on that one, you'll see it was filed by the same people on the same day, so the EA was doing both applications in parallel, and messed up the copy-paste from one action to the other).

    So, if you think about that for a minute, what this application and refusal are telling you is that "BIG WIN SLOTS" was refused registration because it was considered confusingly similar to another registration.

    So the upshot here - what this "expired trademark" is actually telling you, is that what you need to be concerned about is US TM Reg. No. 4296330 for "BIG WIN VEGAS" and from which "VEGAS" is disclaimed as merely descriptive material. And the reason you need to be concerned about it is that you have a link (right above in this post) which takes you to an official statement of the USPTO that "BIG WIN VEGAS" and "BIG WIN SLOTS" (pace the typo) are confusing similar to each other in relation to gaming software (which is about the only thing they'd be used for apart from actual slot machines which are, nonetheless, software controlled as well).

    To really dig into it would require more study. The situation relative to "BIG WIN" appears to be somewhat complex. There are a bunch of applications in suspension, but there is this an array of inter-related issued, refused, pending, and suspended applications around the phrase "BIG WIN". If I have time later this weekend, I'll explain what sort of analysis might apply to these circumstances.

    But, the only point here, is that this is why I generally don't take what is said in thread-openers about "the database says X" at face value, since most of the time, the poster doesn't really know what it is they are looking at or what it might mean.

    After sorting out the players in the various registrations, it is THEN interesting to take a look at who is selling what, by using Google.
     

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