Question about a 'DEAD' Trademark

[morf13]

Question about a 'DEAD' Trademark

At the trademark checking site-
http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4805:eyj7py.1.1

If a trademark shows as 'DEAD', can they ever bring it 'Back to life'? Could I reg a domain for a dead trademark, without infringing on their trademark? Anybody know?

I did find this,but don't understand it fully-

What does it mean for a trademark to be dead?

1. 
   a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademarkexamining attorney would cite.

 

[frank-germany]

I would not hesitate to grab it

 

[jkhg]

I'm no legal expert. But since the trademark is dead, I will grab the domain if I like it so much.

 

[Willox Perez]

As mentioned before you can definitely get it since the trademark is dead. Just make sure to double check a couple of sites that tell you about trademarks to be sure. If there are a bunch of trademarks and most are dead while 1 or 2 are live then I would stay away from that type of domain.

- Will

 

[ulterios]

I actually researched this about a year ago (give or take) and found that if a TM is dead, the only way to get it reinstated was to reapply for the TM. If 2 people are applying for the same TM at the same time and one of these people held the TM previously (and it's dead), then the previous holder would get the TM.

I am NOT a lawyer offering any legal advice, but have done lots of research because of a domain that I wanted when I looked into it.

 

[ZapNano]

I actually researched this about a year ago (give or take) and found that if a TM is dead, the only way to get it reinstated was to reapply for the TM. If 2 people are applying for the same TM at the same time and one of these people held the TM previously (and it's dead), then the previous holder would get the TM.

I am NOT a lawyer offering any legal advice, but have done lots of research because of a domain that I wanted when I looked into it.

I think that make sense. If theTM is dead then is no longer active; abandoned. To make it alive again and to be useful, then I guess you have to file TM; and of coarse fees and such. Make sense, who knows...

 

[ulterios]

I think that make sense. If theTM is dead then is no longer active; abandoned. To make it alive again and to be useful, then I guess you have to file TM; and of coarse fees and such. Make sense, who knows...

Yeah, I was looking into it because I really wanted a domain but was worried about a dead TM. I did lots of research for a couple weeks before I had enough information to be satisfied enough to register the name.

 

[bravlanda10]

trademark is dead means it's dead, man.

 

[Psychedelic.us]

Question about a 'DEAD' Trademark

At the trademark checking site-
http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4805:eyj7py.1.1

If a trademark shows as 'DEAD', can they ever bring it 'Back to life'? Could I reg a domain for a dead trademark, without infringing on their trademark? Anybody know?

I did find this,but don't understand it fully-

What does it mean for a trademark to be dead?

1. 
   a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademarkexamining attorney would cite.

In the realm of domains, there's no such thing as trademark infringement if you're able to articulate the domain. For example, if you owned Essence.com you would probably have everyone from Essence Magazine, dozens of other companies who owns fragrance lines called Essence, and not to mention the millions of small town businesses making candles called Essence.

What about if you had weightwatchers.com? Well, you watch the weight if Chickens and Turkey to make sure their big and beefy for the holidays :D

There are some circumstances where they can prove your intentions were to infringe, or steal. Take, for example, the guy who owned different misspelled Google.com URL variations. He was getting millions of hits per month. That was a bit more obvious.

 

[serryjw]

I actually researched this about a year ago (give or take) and found that if a TM is dead, the only way to get it reinstated was to reapply for the TM. If 2 people are applying for the same TM at the same time and one of these people held the TM previously (and it's dead), then the previous holder would get the TM.

I am NOT a lawyer offering any legal advice, but have done lots of research because of a domain that I wanted when I looked into it.

--------------------
You are still registering the domain 'in good faith' because it was DEAD at the time of registration.

 

[BrandClub.com]

Question about a 'DEAD' Trademark

At the trademark checking site-
http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4805:eyj7py.1.1

If a trademark shows as 'DEAD', can they ever bring it 'Back to life'? Could I reg a domain for a dead trademark, without infringing on their trademark? Anybody know?

I did find this,but don't understand it fully-

What does it mean for a trademark to be dead?

1. 
   a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademarkexamining attorney would cite.

If the TM is dead means that they will have to apply again if they want and the new application (if granted)
will display the new date (like with dropped domains, they display the dropcatch date even if they where registered before) ...

 

[morf13]

Thanks for the replies.

I have another question regarding trademarks, although I am sure most of us are not lawyers here, but for example, I recently registered Broadway.rocks and discover.rocks afterwards I checked and the word Broadway appears to be trademarked. I found that to be weird since there are various streets and businesses named Broadway. Also there is a Broadway.com totally unrelated to the trademark holder of Broadway. Then there is discover the credit card company who has a Trademark, but can a Company trademark on English word? For example could somebody register apple.rocks? It seems like companies could just trade mark every single English word and make it their own . Has anybody here had experience registering domain or selling domains of words that are trademarked?

 

[enlytend]

(Moving this to the Legal Discussion section - real lawyers do drop by here now and then.)

It has nothing to do with the word and everything to do with the USAGE.

TM 101 (simplified)
- A trademark identifies a UNIQUE source of goods / services.
- Trademarks are registered under one or more classes of goods and services. The same character mark can be registered under completely different classes to different owners. (Example: Apple computers, Apple records, Apple Bottom jeans.)
- Since they represent a UNIQUE source, your tm application will be trashcanned if you try to register a GENERIC word for its same meaning. You can't tm "Apple" to sell apples.
- You are infringing if you use the tm'd term or one that is "confusingly similar" for that same class of goods/services as the registrant. They are legally the unique provider of those goods and services under that name. By using the same name, you're stepping on their toes and potentially disrupting or unfairly profiting from their business. (Misleading their would-be customers, etc.)
- Famous and well-known tm's have more "reach" than the classes for which they are registered.

 

[morf13]

Thanks for

(Moving this to the Legal Discussion section - real lawyers do drop by here now and then.)

It has nothing to do with the word and everything to do with the USAGE.

TM 101 (simplified)
- A trademark identifies a UNIQUE source of goods / services.
- Trademarks are registered under one or more classes of goods and services. The same character mark can be registered under completely different classes to different owners. (Example: Apple computers, Apple records, Apple Bottom jeans.)
- Since they represent a UNIQUE source, your tm application will be trashcanned if you try to register a GENERIC word for its same meaning. You can't tm "Apple" to sell apples.
- You are infringing if you use the tm'd term or one that is "confusingly similaf" for that same class of goods/services as the registrant. They are legally the unique provider of those goods and services under that name. By using the same name, you're stepping on their toes and potentially disrupting or unfairly profiting from their business. (Misleading their would-be customers, etc.)
- Famous and well-known tm's have more "reach" than the classes for which they are registered.

Thanks for that full explanation.
So it sounds like, me registering the domains DISCOVER dot rocks or BROADWAY dot rocks, won't interfere with any trademarks, but something like best apple computers dotcom would be an issue.

 

[enlytend]

Again, it entirely depends on what you do with them. Don't use them for anything related to or competing with the existing trademarks. Don't just guess - look at the details of existing trademarks and see what classes they are registered for. Watch out for parking - parked pages may show ads related to the mark holder.

I would stay far, far away from something like Apple computers dot com. Why would anyone register that anyway, if not to try to profit from their name?

If you're dealing in domains, you owe it to yourself to at least learn the basics of trademark law. Here are a couple good resources to start with:

https://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
http://cyber.law.harvard.edu/property00/domain/CaseLaw.html
http://www.domainsherpa.com/do-not-register-trademark-domains/#transcript

 

[serryjw]

Again, it entirely depends on what you do with them. Don't use them for anything related to or competing with the existing trademarks. Don't just guess - look at the details of existing trademarks and see what classes they are registered for. Watch out for parking - parked pages may show ads related to the mark holder.

I would stay far, far away from something like Apple computers dot com. Why would anyone register that anyway, if not to try to profit from their name?

If you're dealing in domains, you owe it to yourself to at least learn the basics of trademark law. Here are a couple good resources to start with:

https://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
http://cyber.law.harvard.edu/property00/domain/CaseLaw.html
http://www.domainsherpa.com/do-not-register-trademark-domains/#transcript

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I agree. Potentially DISCOVER COULD be a problem.