Question regarding selling domain "LLLLLLL.io" while "LLLLLLL.com" is Trademarked

[Columbus13]

Hello everyone,

I have a domain "LLLLLLL.io" that I am considering selling, but I’ve noticed that "LLLLLLL.com" is a registered trademark (since 2012). Before moving forward, I wanted to ask the community whether it's potentially problematic to sell this domain.

For context, I saw on NameBio.com that the domain "LLLLLLL.co" was sold about three years ago, and it is currently listed for sale for a significant amount. I had decided that selling the domain was too risky, but the case with 'LLLLLLL.co' gave me hope, which is why I’m asking here.

Any advice would be greatly appreciated.

Thank you!

 

[jberryhill]

Would have to know more specifically what is the term at issue.

This form of question is pointless.

"Monster" is a trademark for an energy drink, an employment listing service, electronics, and more...

"Monster" is also a dictionary word. If Monster.tld went to a for sale page saying, "This would be a great name for scary movies, Halloween costumes, and all sorts of monsters", that would be fine.

If Monster.tld went to a PPC page advertising energy drinks, that would be a problem.

So, first, let's talk about the degree of inherent distinctiveness of the mark in question. Then we can talk about how it's not a binary question of "If I sell it, will there be a problem or not?"

It's not a useful question when we are talking about arbitrary marks - i.e. common words or phrases which have a primary meaning independent of their use as a mark.

Now, if we are talking about something like "Microsoft", then it is certainly going to be a problem.

"Microsoft" has no independent meaning apart from its significance as a trademark, and it is going to be an issue.

So, to recap on "Will it be a problem?" The answer is:

First, you have to determine the degree of inherent distinctiveness of the mark, and whether the word or phrase is susceptible of substantial non-infringing use. And by "substantial", I don't means some bullshit fig leaf excuse that someone cooked up on what is otherwise a well-known trademark.

Second, you have to consider what is the message being sent by the lander? Is it showing ads related to the trademark meaning? Have you included some idea of WHY you think the name has value, that discusses the substantial range of uses the domain might have?

But all of that skips over the point of whether or not the registered mark is still being used as a mark. Just because there is a registered trademark does not mean that it is still valid or being used.

Trotting out the same (*)$(*&)(*$# answer that's been posted a gazillion times here - it is possible for a person to own a valid dog license, but have no dog. It is also possible for someone to have a dog, but not have a valid dog license.

A trademark registration is a data point. It is not an answer to the question of whether there is still an underlying trademark.

 

[jberryhill]

Let's dig a little deeper into things that these questions always miss.

There are some 500 US trademark registrations in which the textual component consists of six letters followed by ".com".

But they are not all the same.

Take this one US TM Reg. No. 2580467 for "DATING.COM"

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

Is it a registered mark? Yes, but it is on the Supplemental Register. This means it was refused as descriptive but it capable of someday maybe becoming distinctive through longstanding continuous substantially-exclusive use as a mark. But, marks registered on the Supplemental Register are not presumptively valid marks, such as those on the Principal Register.

Or take this one - US TM Reg. No. 7690921

Will it come up in a search for registered marks containing "DENTAL.COM"? Yes it will. But, again, look closer:

The owner had to specifically disclaim rights in the descriptive "DENTAL.COM" text, and thus what is the registered mark is the complete combination of the logo and words.

That also goes for marks like this one:

Where you can see that "TOWING.COM" is disclaimed, so that what is protected by the registration is the appearance of the text, not the text itself.

In this one....

...not only is the text disclaimed, but the colors themselves are expressly claimed as part of the mark.

All of which brings us to my favorite part of a Namepros thread - Guess the mark.

Assuming we are looking at marks which are six letter .com names, and which have a registration date (as opposed to an application date) in 2012, there are sixteen candidates:

For completeness, if we throw in filing date, instead of registration date, we pick up a few more:

If someone wants to filter these by "plausible candidates, has a .io name registered, and not by the same owner", then we can probably narrow it down to a relative handful, and start knocking them out.

For example, "Marble.com" is first on the list, but actually disclaims the text:

But this is a classic example of a frequent Namepros question that simply cannot be answered on the basis of the information given.

 

[jberryhill]

The Marble.com example actually shows one of the problems that trademark attorneys have with clients who just don't "get it".

The registered mark is:

...and the wording "Marble.com" is disclaimed. The reason they applied for the logo in the first place was because their attorney told them there was no way they were going to register "marble.com" for a marble business, and so they registered the logo as their trademark.

Fast forward to 2025 and look at their website:

That's the kind of thing that drives their attorney up the wall.

But, if you want to know whether they abandoned all use of the mark, it is worth taking a look at the specimen they submitted when their 2022 renewal came up:

Clearly that truck has seen better days, but if that's what they had to do when their attorney said "We need a picture of something used in the business which has THIS logo on it," that's what they scrambled to come up with. Because back when the first renewal was due in 2018, this is what they used:

The next renewal isn't due until 2032. So, if they don't keep that truck around, I will bet there is nobody running the business who understands that they will need to come up with a specimen and statement of continued use in another seven years.

I did this as an example of the kind of analysis which really needs to be done in order to approach these kinds of questions. And, no, asking ChatGPT isn't going to get you there either.

 

[jberryhill]

...and once we have all that sorted, THEN we might take a look at "Does the '.com' part really matter in the context of this particular mark and its relative distinctiveness?" Because that too is a question that may have come up during prosecution of the registration.

 

[Columbus13]

Thank you very much @jberryhill for the detailed and thorough answers. I believe they will be useful not only to me, but also to the other forum members. And the domain is not 6 letters, I apologize if I misled you and it was important. Actually, it's two words, and for simplicity, I replaced them with an arbitrary number of 'L's, assuming there is a general rule for registered trademarks and details are not that important. Actually, the domain name is c h e a p c r u i s e s. Thank you once again!