question Trademark Question...

[thevictor]

Thanks in advance for any and all opinions...

I own a word.word gTLD domain name and recently noticed there was a newly (04/2019) registered trademark for the exact string. I regged this domain in 2017 and have not yet done anything major with it. I do have some plans for this name, but now I'm not sure if there are risks associated with using it.

Has anyone had any similar cases? Do you have any advice or suggestions?

Thanks again!

 

[jberryhill]

It's either PENDING, LIVE or DEAD.

Oy. Records in the USPTO are either LIVE or DEAD. Period. There is no "PENDING" status. That's where domainers go wrong. Look at this example:

Of those 13 records relating to "oy", there are:

4 abandoned registrations
1 abandoned application
5 pending applications
3 registered marks

If those FOUR categories are not obvious to you by looking at that table, then it would do you a lot of good to figure out why I could group those records into those four categories simply by looking at that table.

 

[BrandEntrance.com]

Oy. Records in the USPTO are either LIVE or DEAD. Period. There is no "PENDING" status. That's where domainers go wrong. Look at this example:

Show attachment 128345

Of those 13 records relating to "oy", there are:

4 abandoned registrations
1 abandoned application
5 pending applications
3 registered marks

If those FOUR categories are not obvious to you by looking at that table, then it would do you a lot of good to figure out why I could group those records into those four categories simply by looking at that table.

Uhhhh... *Laurel and Hardy music*.
Yeah, nobody ever read "Trademark Pending". The process is now called ASSIGNED in some places and here at the USPTO it's a LIVE without a TM regnr.

NOT the point, you are nitpicking and the USPTO is not the only source for TMs.

If you apply, it's a PENDING application. Be that if it's to college, for a library ticket, whatever until it's granted. Don't try semantics and then use your own argument against yourself.

Why are you complicating something simple and you work in this field? Couldn't you just have outlined your point.

 

[Peter]

Uhhhh... *Laurel and Hardy music*.
Yeah, nobody ever read "Trademark Pending". The process is now called ASSIGNED in some places and here at the USPTO it's a LIVE without a TM regnr.

NOT the point, you are nitpicking and the USPTO is not the only source for TMs.

If you apply, it's a PENDING application. Be that if it's to college, for a library ticket, whatever until it's granted. Don't try semantics and then use your own argument against yourself.

Why are you complicating something simple and you work in this field? Couldn't you just have outlined your point.

Are you suggesting that the field of trademarks is simple? Far from it. Also regardless of wether a trademark is fully approved or not does not mean that you would be infringing. A registered and approved trademark just makes it easier to enforce.

I personally have a lot of respect for any advice jberryhill says. He has been involved in many UDRP cases in the past and has plenty of experience.

If you beleive trademarks to be a simple issue then feel free to represent yourself if you ever get a UDRP case. I doubt you will be successful without professional help from someon such a jberryhill who is seasoned in the process. In fact many general lawyers wouldnt touch such a case as they lack any experience or knowledge.