trademark Registering after trademark expired?

[Lord Antares]

Hypothetically speaking, if some company had a trademark on a name for a year, then didn't renew it for 5 years after that and I went and registered a domain which would have infringed on the trademark when it was active, then the company renewed the trademark later on, would I lose the right to my name?

So, their original trademark would predate my domain registration, but their trademark renewal would come after my registration.

What happens in this case?

 

[draco]

Is the company still in business?

Are they still marketing the product or service associated with their trademark?

Isn't the renewal period for trademarks 10 years?

 

[Lord Antares]

They are still in business. But it says:

602 - Abandoned-Failure To Respond Or Late Response

on justia.com

 

[Lord Antares]

Anyone? I would think that I would be able to register such a name because otherwise companies could only renew their trademarks when they want to win a case.

 

[draco]

It sounds to me like they applied for the trademark but never finished the application and a registered trademark was never granted. But I can't say for sure based on what you've said here. That doesn't mean they don't have a common law trademark, which is different than a registered trademark.

I can't really answer beyond that. I think an actual attorney would have to look at the particulars of your case. There are variables, such as if the product or service is still being offered.

Not a lawyer. Not legal advice.

 

[Lord Antares]

I see.

The funny thing is, another company has got a trademark for the same term but in a different market altogether.

But this other company actually doesn't own the exact match .com. The company which abandoned the trademark does.

Shrug.

 

[jberryhill]

Abandoned-Failure To Respond Or Late Response

That was not a registered mark in the first place.

if some company had a trademark on a name for a year, then didn't renew it for 5 years after that

In the United States, a trademark can be registered for an initial term of six years, and is then subject to renewal for periods of ten years at a time.

If you are referring to a registered mark in the US, the question makes no sense.

 

[Lord Antares]

That was not a registered mark in the first place.



In the United States, a trademark can be registered for an initial term of six years, and is then subject to renewal for periods of ten years at a time.

If you are referring to a registered mark in the US, the question makes no sense.

I didn't know this.

Ok so theoretically if someone registered a trademark for 6 years, didn't renew it and let it expire, then someone registered a domain that would infringe on said trademark, then 2 years later the company applied for the trademark again, the domain would not be considered as an infingement?

 

[Brandmore]

Even if the trademark is active a domain/name can sometimes still be used by another company if they are not in the same industry and if they don't offer services and products in the protected classes.

 

[jberryhill]

Ok so theoretically if someone registered a trademark for 6 years, didn't renew it and let it expire, then someone registered a domain that would infringe on said trademark, then 2 years later the company applied for the trademark again, the domain would not be considered as an infingement?

Many more facts would be needed.

Time and time again, the USPTO database (or crappy derivative databases like trademarkia and justia, which don't even provide complete data) is treated like a magic oracle of binary answers.

Let me ask you something. You are trying to figure out if I am dead or I am alive, okay?

So, you go to the elections office in my state and you look up my voter registration.

Now, you tell me:

1. If my voter registration is still valid, does that mean I am alive?

2. If my voter registration has expired, does that mean I am dead?

Here's the thing. Where I live, my voter registration won't drop off the rolls unless I don't vote in two election cycles. So, I can be dead for up to four years while my voter registration is still live.

Likewise, I can still be alive, but I haven't voted for a long time. So, I'm alive and my voter registration is dead.

The exact SAME thing can be true can be true of trademark registrations. Just because some nitwit screws up and doesn't pay the renewal fee for, say, the trademark registration for "Coca-Cola" does NOT mean they aren't cranking out a zillion gallons of it a day.

But in this instance, you are looking at an application which was refused registration in the first place. If you looked at the USPTO database instead of some derivative nonsense like Justia, then you could click on TSDR, have a look at the prosecution record, and KNOW exactly why registration was refused in the first place, which would be a heck of a lot more enlightening.

It's just not a meaningful question.

If I have Apple.whatever and there is a registered mark for "APPLE", for computers by Apple computers, then is there "infringement"? Who the heck knows without knowing what I'm doing with the domain name. Am I selling apples or am I advertising computers?

Trademarks don't all come in a single strength. People on Namepros are fond of believing crap like "If you are using the domain for something different than the mark, then you are okay". That's total bullshit nonsense. It's certainly not true for inherently distinctive marks, and it is certainly not true for famous marks. I don't care what you do with "Coca-Cola.whatever". You can use it to sell insect repellent if you want to. But at the end of the day there is not a sentient being on the planet who is going to think you weren't trying to ride on the fame of Coca-Cola by using that famous mark to sell insect repellent.

It's just sad and frustrating that so many people have bought into the common nonsense that some completely misunderstood technical distinction in trademark registration data is going to provide a meaningful answer to the overall question of whether a domain name registration is likely to get into trouble or not.

That's my "scream into the pillow" for today. Back to work...