Trademark Domain Issue

Labeled as domains in Legal Discussion, started by howudoin8, Oct 17, 2020 at 7:23 AM


  1. howudoin8

    howudoin8 Top Contributor VIP

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    First time facing such an issue so need inputs. I registered the name first & later came to know about TM issue.

    Hand Registered a name which was trademarked by another company in 2016. Domain History Sequence:

    Aug 2016: Trademark registered & company registered the domain
    Aug 2017: Trademark still registered but company Dropped Domain
    Aug 2017: Domain registered by another company
    Aug 2018: Domain Dropped Again
    Feb 2019: Domain registered again
    Feb 2019: Domain Dropped again (within 5 days, so I guess someone used Grace Delete option)
    Oct 2020: Domain registered by me

    Trademark is registered to this day but domain was essentially available for Hand reg for last 2 years (approx).

    So should I sell domain for throwaway price (that's what they want) or do I stand a decent chance to defend ownership since they didn't registered the name for last 2 years even when it was available?

    Experts please Chime in!
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  2. karmaco

    karmaco Top Contributor VIP

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    The registering/dropping of the domain has nothing to do with upholding a trademark holders rights. Drop it like the others did and check before next time.
  3. jberryhill

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

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    Leaving aside the other facts and simply focusing on the question of "They didn't register the domain name" as a defense, it should be obvious that "the trademark claimant didn't register the domain name" is a true statement in every domain name dispute.

    I mean, obviously, if a trademark claimant HAS a domain name, then they wouldn't be seeking to transfer the domain name from someone else.

    So, no, just looking at that as a defensive argument in isolation from other facts, it is a non-starter.
    Last edited: Oct 19, 2020 at 7:33 PM
  4. Sutruk

    Sutruk Top Contributor VIP

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    One question would be: Is the company still using the trademarked name?
    Or did they stop using the trademark for more than 3 years?

    Non-Use For 3 Years Leads To Abandonment

    "Use it, continue to use it, or you’ll lose it. Quickly."

    "If a trademark hasn’t been used for 3 consecutive years in commerce in the US, it is evidence of abandonment. “Use” of a mark means the bona fide use made in the ordinary course of trade, and not made merely to reserve the right."

    Would this be correct Mr. @jberryhill ?

    Note: I am NOT a lawyer.

    Edit: If the Trademark name is the name that company is still using, then drop the domain.
    Last edited: Oct 19, 2020 at 7:54 PM
  5. jberryhill

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

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    In at least one of my regular posts on how domainers' reliance on "something I saw in a registered trademark database" is fundamentally misguided, I have tried to boil it down to:

    1. There can be a trademark, and no registration, and

    2. There can be a registration, and no trademark.

    I usually use that with the dog license analogy.

    Let's say you are planning to break into my house, and you want to know if I have a dog. You come up with the idea of checking the county dog license files.

    The problem is, that you cannot know for sure if I have a dog by looking at the register of dog licenses, because (a) I might have a dog, but have not registered my dog, or (b) I might have registered my dog, but my dog died before the registration expired.

    In the US, a trademark registration must be renewed after the first six years, and then at ten year intervals after that.

    So, sure, someone can get a trademark registration in 1999, renew it in 2005, and renew it again in 2009. It will be due for renewal in 2019. But if they went out of business in 2010, quit using the mark, and there was no successor business, then that trademark died in 2010. The registration, on the other hand, is not going to expire until 2019.
    Last edited: Oct 19, 2020 at 10:41 PM

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