Trademark/Domain filing/registration dates.

[helpme]

On the 2nd Nov 2005 I registered a domain with good intention to develop it, nothing more. It has been redirected to a another site of mine which is in use daily by many visitors for the past year and a bit.

Recently I have decided I want to sell it as I don't have time to develop it how I wanted to so I had a look on "uspto.gov" and i have noticed the name is Trademarked but the TM was filed on the 28th Nov 2005, nearly a month after my registration.

My question to you is, do I have a right to do what I want with the domain or should I do the right thing and hand over the domain to company?

Also, if I were to sell the domain would the original date of the 2nd Nov still be applicable to the new owner or will they now be within a trademark infringement?

Thanks for you help.

Regards

edit: ok doing a bit more reading it looks as if I may not be able to sell iit to someone else, but perhaps I could sell it to the company? Any thoughts?

 

[Keynes]

You should be okay, generally, as long as you registered the domain unrelated to their product, they didn't have an existing history of using the name and your use of the domain doesn't exploit their TM. Focus on use: don't park it, and develop it in a way unrelated to their product. You can sell it, but be careful about your approach: let them come to you. Cheers

 

[helpme]

Hey rocketfly, thanks for your reply. I may just keep it then and wait for the company to approach me.

When you say

You can sell it, but be careful about your approach: let them come to you. Cheers

are you referring to the company who has the trademark or anyone in general?

 

[Keynes]

Hey rocketfly, thanks for your reply. I may just keep it then and wait for the company to approach me.

When you say are you referring to the company who has the trademark or anyone in general?

When you're dealing with a TMed name, especially don't approach the owner of the TM...you probably are best off not going for an unsoliciting sale at all, however...further, on any sale, make sure you can an iron-clad contract protecting you.

 

[Dave_Z]

Recently I have decided I want to sell it as I don't have time to develop it how I wanted to so I had a look on "uspto.gov" and i have noticed the name is Trademarked but the TM was filed on the 28th Nov 2005, nearly a month after my registration.

Can you post a copy of the registration's details? Minus the name and serial
number.

 

[gamehouse]

well, one thing thats not mentioned is "use in commerce: date". If that date is prior to your registration date, you might have to do more research, imo.

Gh

 

[IAmAllanShore]

well, one thing thats not mentioned is "use in commerce: date". If that date is prior to your registration date, you might have to do more research, imo.

Gh

Thought this was what Dave was going for, but I'm not sure...

In any event, kudos to you for having the name before they registered their TM, but as has been discussed time and time before, the lack of a registered TM does not give you carte blanch to use any name however you would like.
That being said, without knowing the names and details, we can all only give very general information.

-Allan

 

[Ronald Regging]

To answer another of your questions... Once you sell the domain, the new owner will not be protected by the original registration date. However, depending on what they use the domain for, they could easily have a legitimate right to it as long as it doesn't violate the TM.

 

[helpme]

If from those details you some home find out the name please don't mention it on the forum. I don't think it's likely but you never know! I'm in unchartered territory here.

Word Mark *******
Goods and Services **********
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Design Search Code
Serial Number *************
Filing Date November 28, 2005
Current Filing Basis 1B;44D
Original Filing Basis 1B;44D
Owner (APPLICANT) **********
Attorney of Record *************
Priority Date September 28, 2005
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

I don't have a 'use in commerce: date' tag....

In any event, kudos to you for having the name before they registered their TM, but as has been discussed time and time before, the lack of a registered TM does not give you carte blanch to use any name however you would like.
That being said, without knowing the names and details, we can all only give very general information.

-Allan

What do you think it's best for then? Perhaps just to pull in traffic? but even if I use it to pull in traffic and redirect them somewhere else what if I have PPC, which of course is not related to their product, on my site, does that infringe on their trademark? In theory, I am generating revenue.

 

[DNQuest.com]

The first used in commerce date is usually on the line of catagories are listed. You will also have to find out what is meatn by "priority date". It shows as Spet 25. Filing is not a important and first used in commerce. The best way to research is google the name and see what the results are. If thee is a company, chances are there is be a bio/history/about us link whee you can see how long they have been around.

Now the question is, did you register the name cause it just popped in you head and you decided to register it, or did you hear something, you saw the domain was available and registered it? (as an example, the great "Zune squatting of aught 6" where everyone thought it was open season to register 64353526 or so zune names thinking it was ok).