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Registering or Acquiring a TM domain whose TM shows DEAD

Labeled as question in Legal Discussion started by Shaun Lun, Apr 16, 2019.

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  1. Shaun Lun

    Shaun Lun Established Member

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    Starting a new thread here because I couldn't find a thread that exactly match my enquiry.

    Seeking NP members' advice.

    So I read abit about trademarked domains and maintained staying away from them. But recently I came across one which used to be a brand in the past. A quick google search says that the TM status is DEAD.

    Does this mean the domain is free from trademark and is it safe to acquire the name? I searched uspto database.
     
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  2. mAd MaX

    mAd MaX Established Member

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    UDRP case against it will consider Common Law mark if filed.
     
  3. Shaun Lun

    Shaun Lun Established Member

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    Means still trademarked?
     
  4. mAd MaX

    mAd MaX Established Member

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    Not exactly but that's a criteria commonly used.
     
  5. Shaun Lun

    Shaun Lun Established Member

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    So I guess it's a little grey area. No doubt the name has pretty good backlink profile. But one thing I would like to add is that the name remained unused for the past years, it was parked free. I guess they pretty much left the business or so. More inputs from experienced domainers will really help. Thanks in advance.
     
    Last edited: Apr 16, 2019
  6. ThatNameGuy

    ThatNameGuy Restricted Gold Account

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    My experience is, if you ask 10 different lawyers you'll get 10 different answers. First off, I don't believe there is anything that should keep you from registering the name imho. I own a few names where the local attorney here on NP accused me of cyber squatting. They're BeatleMemories, YankeeMemories and HarleyMemories, and I just registered a few minutes ago SavortheTiger that could also be considered some sort of TM violation if it weren't for the fact that Tigers are a real big deal in Africa, Zoos and all around the world. I personally own three trademarks that I did myself, and if someone violated them with intent to harm me and benefit themselves they'd have a huge fight on their hands. However, if they just needed the name for something altruistic, I would actually encourage them and wish them well.
     
  7. BaileyUK

    BaileyUK Top Member VIP

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    I personally would be quite happy to register a domain where the TM is showing dead, obviously check for any other TM's that are live. Take note of the dates just for future reference. Best to stay away from the same product/service categories, particularly if it is only a recent cancellation .

    I did have quite a major company come after me and threatening all sorts of consequences if I didn't return a registered domain after letting their domain and trademark expire, They tried so many lies to try to justify their claim that I thought OK, now You've also lost my sympathy,, lets go into battle.

    Yep, they gave-up in the end.
     
    Last edited: Apr 16, 2019
  8. Shaun Lun

    Shaun Lun Established Member

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    Yep, it's a very old case. It was cancelled back in 2006, as the company could not provide declaration under certain section. And i could see the name was parked at the registrars for the past 3-4 years.
     
  9. BaileyUK

    BaileyUK Top Member VIP

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    13 years is a long, long time. Definitely take the domain if you want it. At that age I wouldn't even worry about the previous (applied for) TM categories.

    That's good to read that your acting with due diligence and investigating the history. That's part of what makes domaining so interesting at times'

    In these type of instances it's always worth checking similar words, plurals etc just to make sure they (the previous TM applicant) hasn't gone with something very similar and has a valid TM for something very close - This again is just for TM category overlap
     
    Last edited: Apr 16, 2019
  10. Shaun Lun

    Shaun Lun Established Member

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    Thanks for the input @BaileyUK I will share the name once it everything is complete in case anyone wants to know. I am not great but wannabe domainer. NP has been so helpful over the years.
     
  11. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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  12. jberryhill

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

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  13. Shaun Lun

    Shaun Lun Established Member

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    I guess no matter how many times the question is asked, the best reply is: it depends and there is no clear cut answer to it. Anyway, thanks for the insights.
     
  14. ThatNameGuy

    ThatNameGuy Restricted Gold Account

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    Shaun...a couple of my favorite people/members in the world just chimed in because of my response. For the record I'm not a lawyer, but I have had a little practical experience involving trademarks. I'm not sure if you're familiar with UDRP, but here is something you need to read;

    The Uniform Domain Name Dispute Resolution Policy (UDRP) is designed to address cases of abusive domain name registration and use. To prevail, a complainant must prove all of the following elements:

    • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
    • The domain name registrant has no rights or legitimate interests in respect of the domain name; and
    • The domain name has been registered and is being used in bad faith
    Based on this information Shaun, I would recommend you do what you believe is right and in good faith. Also for the record Shaun, I own the name DomainEthics.com that when complete will address issues similar to yours and mine.

    Good Luck!
     
  15. jberryhill

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

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    Here’s the thing. Is there a clear-cut answer to this question:

    What color is a dog?

    Well, some dogs are brown, some dogs are black, and so on. It depends on what sort of dog you have. If you have a German Shepherd, it’s probably brown and black. If you have a Husky, it’s probably grey and white.

    How long is a piece of wood?

    The USPTO database can tell you whether a mark is registered. It cannot provide comprehensive information on whether a mark exists. It can provide a lot of useful information, but since domaines incorrectly think of it as a “directory of trademarks”, the answers to questions like this are disappointing.

    How long should I boil pasta?

    When the answer is “it depends”, then the important thing is to get some idea of what sorts if facts it depends upon.
     
  16. jamesosix

    jamesosix Established Member

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    The same length from the middle to the end, as the beginning to the middle ;)

    The answers are there if you are clever enough to find them.
     
  17. Ostrados

    Ostrados Entrepreneur Gold Account

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    @Shaun Lun what @jberryhill is saying in other words is that if they are still in business then regardless of the TM status (dead or alive), you should not get this domain because you will attract troubles to yourself as honey attract bees.

    So do more research and double check twice that they are really out of business and there are no close variations to the TM..etc.

    If it is an average domain name then it is not worth the trouble, for a peace of mind I would stay away and move on.
     
    Last edited: Apr 20, 2019 at 6:18 PM
  18. Shaun Lun

    Shaun Lun Established Member

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    This, right here, is now plain and simple. Thanks for the clear interpretation @Ostrados

    Well, it's a really good brandable one which is why it was once a brand. From my research they are out of business, but a close variation does exists in another country in the same area of business but I am almost they don't hold the trademark for this particular one. I mean that close variation is "this brand" plus some general word (a two worded brand).

    Thanks once again for your valuable contribution.
     

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