Trademark by usage...

[verbster]

We've read (and been told) countless times that domain trademarks can be established by use....that it doesn't take an official USPTO registration. So that's a done deal...or is it?

What happens if someone claiming a TM by usage officially applies for the trademark but is turned down? What's the domain's legal standing then?

Can the TM by usage stll be considered legit...even if not supported by the USPTO? How?

Would that allow other domains previously possibly considered infringement on the usage domain actually be okay? In fact, could other domains that could have been once considered infringements, if they got official USPTO acceptance, turn around and claim infringement on the usage name? (or even without USPTO, could they turn around and claim usage TM...?)

Lots of weird scenarios here. Just curious.

(No, this didn't, hasn't, isn't and, hopefully, won't happen to me.)

 

[DNQuest.com]

I wanted to answer this, but I think it would be best for John or Brett to handle.

 

[Peter]

I should imagine it depends on the reason it was turned down BUT as DNQuest.com states it would be best for the answer to come from someone like John who is familiar with the inner workings of how trademark law works.

 

[verbster]

Take a shot at it just to have some fun. Maybe JB will post later, and we can see who came closest and why.

Just my guess, without including all kinds of mitigating circumstances and such (like filing under the wrong USPTO category), the TM by usage wouldn't hold up.

 

[Dave_Z]

I wanted to answer this, but I think it would be best for John or Brett to handle.

My thoughts exactly. But I'll take a shot anyway.

It boils down to someone being able to demonstrate trademark rights, more so
when they first started using it as such. But how to show such depends what
method of dispute resolution they opt to use, and what its standards are.

Especially if it's a .com we're talking here, you've got UDRP and the courts. It
is the latter that's potentially more complex, depending on where the parties
are, what are the court jurisdiction's so-called standards, etc.

Of course, that's simplistically speaking. As you know, things aren't always as
simple as they appear.

 

[labrocca]

What happens if someone claiming a TM by usage officially applies for the trademark but is turned down? What's the domain's legal standing then?

Then they don't have a Registered Trademark. I would think in a court that showing the USPTO denied them the registration would go a long way to show they do not have rights.

Can the TM by usage stll be considered legit...even if not supported by the USPTO? How?

It could...they might have attempted to get a registered mark for something too obscure. Yet they might still have rights for the TM if they narrowed their definition of usage.

Would that allow other domains previously possibly considered infringement on the usage domain actually be okay?

Not really...this is tough to answer. The main question is WHY the registration was denied. One thing to wonder is WHY they tried to register the TM anyways. Was it their intention to go after others?