Epik

Trademark company was bought out and no longer uses the name.

Labeled as trademark in Legal Discussion started by techbrew, Jan 7, 2019.

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  1. techbrew

    techbrew Established Member

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    I have a domain question. Say a company has a domain and a trademark for that name. The company then gets bought out and now does business under a different name. The trademark is still active even though they don't use the name anymore and now the domain is expiring. Would I get in trouble for picking up the domain at auction and potentially using it for my company or just owning it in general? My company has to do with the same industry. Thanks.
     
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  2. offthehandle

    offthehandle . Gold Account VIP

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    Im not a lawyer, not legal advice. Opinion only.

    Why would the competitor change TM and let it expire? Lack of goodwill or bad product? Or purely incompetence as a missing part of an acquisition, or forgetting to renew the domain?

    If the company brand was changed since it was absorbed under a large corp M/A move, potentially an issue. As @jberryhill will tell you, all domains are subject to a UDRP.

    Looks like you are attempting bad faith if you are piggybacking off an existing TM that belongs to someone else since it isn’t officially dead. IMHO.
     
  3. xynames

    xynames XYNames.com PRO VIP

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    In the US the validity of all TMs derives from use not mere registration.

    However until the registered TM expires or is cancelled it remains technically valid. Plus they could start up using it again anytime.
     
    Last edited: Jan 7, 2019
  4. offthehandle

    offthehandle . Gold Account VIP

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    Sorry forgot to tag you, noticed you are active answering these and a Lawyer. But even at reg fee, having a UDRP Filed and won, wouldn’t be good for OP’s business reputation and could lead to legal precedence or infringement in future disputes?
     
  5. xynames

    xynames XYNames.com PRO VIP

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    That’s a business decision he has to make and of course it also depends on what exactly he or the end user will use the domain for.

    For example if my name were Irwin B. Meyer and I had a website all about me at ibm dot com I could probably get away with it. Would it be worth the fight? Again, a business decision.
     
    Last edited: Jan 7, 2019
  6. techbrew

    techbrew Established Member

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    What if it seems like a generic name. For example, say I own a virtual reality company. There is a company named The Virtual Reality Company that owns a trademark and the matching domain. The Virtual Reality Company is then bought out by Oculus and is absorbed. The domain is set to expire since it is not being used anymore. Would this be safe since it is generic or would you still advise not to use it? Also, the trademark is set to expire this year although it is still currently active.
     
  7. eurorealtor

    eurorealtor okre.com VIP

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    Dropping the domain doesn't mean they would be ok for someone else using it. Same industry, means same TM class, easy target.
     
  8. techbrew

    techbrew Established Member

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    Ok, I understand. Thanks for everyone's input!
     
  9. jberryhill

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

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    Not necessarily. Three years of non-use is presumptive abandonment, and places the burden on them to show that the non-use was excusable for one of the various reasons. If there has been abandonment in fact, then simply starting again in the future does not tack onto their original period use. You can't simply not use a mark for, say, nine years out of a ten year renewal interval, re-start use "anytime" and claim to have had continuous rights in the mark.

    Here, there is an additional significant fact. It would be difficult for them to argue that they maintained an intention to continue use, because the domain name in question was abandoned by them. UDRP's in which the complainant is the party that let the name go are something of a special class, which have gone either way depending on some additional facts not stated here.

    One thing that would be interesting to know is how close is this registration to the next maintenance payment deadline. The OP is probably unaware of the 6 and 10 year renewal dates.

    If the renewal period expires, say, next week or something like that, then it's just a matter of days before that registration ceases to exist. Simply because a mark is registered today, does not mean that it will be registered into the future indefinitely. So one important thing someone would need to know in order to render a competent opinion, among other things, would be when was the registration issued, and when was the last renewal payment made?

    If the indications are that (a) they have not been using the mark, (b) they let their domain name go, and (c) the registration is close to abandonment for non-renewal, then it may simply be a short wait before the registration is likewise gone. But there simply aren't enough facts stated in the OP to know that.
     
    Last edited: Jan 8, 2019
  10. xynames

    xynames XYNames.com PRO VIP

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    That’s a nice long winded theory which could be summarized as “not necessarily” which were the words the writer started off his treatise with.

    In the real world it’s pretty easy to claim continued use upon restarting use and also very difficult to cancel a mark where the use is ongoing at the time of attempting to cancel it.

    Still it’s always good to hear opposing theories and Berryhill’s input is appreciated.
     
  11. jberryhill

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

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    In the real world, where I actually have a relevant practice, there have been numerous instances in which the circumstances boiled down to "We aren't sure, but the trademark registration is due for renewal or is in the grace period for late renewal, so we'll have a much better picture in few days/weeks/months."

    That has happened frequently. It is not an "opposing theory" to point out to someone who might not know any better that registrations are subject to periodic renewals, and if the cusp of one is approaching then the circumstances are quite different from "they can re-start use at anytime".

    I've seen that happen quite a few more times than "rarely".
     
    Last edited: Jan 8, 2019
  12. xynames

    xynames XYNames.com PRO VIP

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    <<It is not an "opposing theory" to point out to someone who might not know any better that registrations are subject to periodic renewals, and if the cusp of one is approaching then the circumstances are quite different from "they can re-start use at anytime".>>

    Uhhh...please restate, so that we may understand. You're talking about educating a client, I got that part.
     
  13. offthehandle

    offthehandle . Gold Account VIP

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    How does the panel define abandonment?

    Sorry if this hypothetical, but to protect a tm/domain/trade name does it need a public use? like what happens if only traditional b2b advertising at trade shows? No website.

    I have a product whose name I invented that didn't sell well. I kept the domain name for 13 years which was the name of the product and had it TMed for the minimum period and decided not to renew and let it expire, I shut down and abandoned the website. Archive dot org still has the details of the product.

    The product still exists for 3 years, but no active sales are made, it does not sell and I let the domain name expire.

    At 3 1/2 years I receive a call for an order for say 200 ea of this dormant product, a brand new market application happens so it will start to sell, I still have datasheets and specifications with (TM) printed on them from previous non selling time period.

    Because commercial order is placed, I decide to go to re-register the domain name, and discover it's taken and was sold to my competitor. The competitor now develops a different website, but "copies" the product in China, they misrepresent to the market they are the true owners of real original product developed 13 years ago.

    Can I win back the domain in a UDRP by showing archive website and prior tm usage? is this done easily? or is it difficult?

    Thanks.
     

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