Trademark Question

[blaknite]

I'm aware of a company with a good established trademark. This company owns their dot com domain. Recently the owner(s) of the company decided to close down. They were in some financial trouble and decided it was best to close their business while they still had funds to pay their employees severance. Anyhow this company didn't officially go bankrupt and have their assets siezed so someone still owns their domain and trademark. They did announce publicly that they were "out of business." I expect that within the year they will drop the domain as there is nobody left to pay the renewal bill.

My question is to what happens to their trademark? If I were to aquire the domain once it drops would I be at risk of someone coming back to dispute it? Since they have declared to the public that they are no longer in business, is their trademark void?

As I understand it a trademark represents a company's right to do business exclusively using a given name. If the company declares that they are no longer doing business using the name I would expect the mark to become public domain again.

I'm deciding between waiting for the name to drop and fighting for it at auction, and going after it before it drops by tracking the right people down. In either case I need to know what problems the trademark presents to judge how much I am willing to put twards this name. If I can I would like to aquire the trademark as well as the name. I supect the name and trademark rights together have substantial resell value. If the trademark is void it would be cheaper to go after the name and establish a new trademark. If the mark is valid it may be cheaper to make an offer to the owner to purchase the trademark and then go after the domain name. Suggestions?

 

[Diabro]

I would treat it as an active Trademark because even if they do not care someone, somewhere, will end up with it. Which is fine as long as you are aware of how to avoid problems.

 

[Dave_Z]

If I were to aquire the domain once it drops would I be at risk of someone coming back to dispute it?

Well, there's always that risk as long as there's someone still using that term
or so as a trademark for something, and if your use is possibly infringing it.

Since they have declared to the public that they are no longer in business, is their trademark void?

I might be wrong, but being out of business doesn't always translate to giving
up trademark rights or no longer using it for its intended purpose. I guess this
is really a fact-intensive question, though, so maybe John or Eric or whoever
can add some points to consider on that.

 

[Diabro]

I might be wrong, but being out of business doesn't always translate to giving up trademark rights or no longer using it for its intended purpose.

I believe that is correct and there was a case wear this happened a few years ago. I cannot remember who was involved.

 

[Ronald Regging]

I think the best solution, and possibly the cheapest is to contact the company. If they are going out of business, they probably wouldn't mind making a few extra bucks from the sale of the domain and TM together. If this is a decent name, you might end up being able to negotiate a cheaper sales price than picking it up at auction.

And the benefit of this approach is that you could transfer the TM and be completely in the clear, legally speaking.

 

[Domainating]

Yup, the TM is an important asset to the company to help them recoup their losses. But it does present an opportunity for you to get the domain very inexpensively, though the official owner(s).

 

[blaknite]

I know the domain has its contact information set to an ex-employee's name. Its my understanding that the person who's name is on the administrative contact is technically the owner of the domain. I'm sure he doesn't know what he's got there.

I was thinking of using the approach of buying the trademark rights and then approaching the guy who's name is on the domain contact. I'm fairly sure he's not keeping it maliciously. Its not parked or even hosted. I'm pretty sure If I approached it from the angle that I had bought the trademark rights and wanted him to hand over the name things would go smoothly.

So the next question is how do I find out who rightfully owns the trademark? Also What kind of legal paperwork is involved in buying a trademark? or rather receiving one, I hope to convince the prior owner to give it up freely. I probably don't have the funds to buy the tradmark at anywhere near face value.

 

[Dave_Z]

Its my understanding that the person who's name is on the administrative contact is technically the owner of the domain.

I don't know if Register.com has since changed their approach on that, but all
other registrars generally treat the registrant as the owner of the domain.

 

[Name Trader]

Are Trademarks transferable or do you have to buy the owning entity?

 

[Diabro]

Are Trademarks transferable or do you have to buy the owning entity?

They are transferable.

 

[blaknite]

According to the uspto website a tradmark is invalidated when either the name has been unused and undefended for 3+ years, or the company declares that it is no longer using the trademark. I think the companies public announcement that they are "out of business" may be proof of the latter. It also says it can take up to 10 years before the trademark office gets around to noting the trademark is dead and allowing someone else to register it. I've sent an email to the upsto contact and asked for more detail. The previous owner can speed the process along by releasing the trademark by signing some forms.

I'm hoping to start the process of reserving the trademark. Then when we reach the stage where we would have a dispute, I hope to have the trademark invalidated by providing evidence that the company is not using it anymore. If that doesn't work, I plan to send the forms to the prior owner(s) and ask him to sign them. Is this a bad approach. I don't want the prior owner to figure out how valuable the trademark is. (we're talking about a company that did 5+ billion a year in sales...)

Anyhow, I figure the trademark business will take 1+ year to sort out. The domain will drop in 3+ months. Do you suppose it would be reasonable to pay the renewal fee to keep the domain off the aftermarket until I have sorted the trademark? Would that put me in a different legal dilemma?

 

[Domainating]

Intellectual property is always an asset. I think your USPTO connection or reading is wrong, I think it is more like 7 years, but I won't argue, I am not a lawyer. But I would think that a company that did that kind of business would know what they had. Then again, maybe that's why they went out of business, because they weren't on the ball. But now that domain trades are more mainstream, it would be hard for anyone to miss.

Getting the domain as it drops might be a real struggle, as well. Even if it drops and winds up on the market, there will surely be a bidding war. If it does drop, good luck getting it, because the trademark still over rides the domain name.

I would consider contacting the rightful owners/caretakers of their intellectual properties. No matter what you do, you take a risk, and this eliminates a large part of the risk in aquiring such a name. But the risk is that whoever is in charge decides to hold on to it because you woke him up. So, obviously you have to tread respectfully, lightly, enthusiastically, and as secretively as you can. All the time being honest, but not letting on.

I doubt if I could do that.

But I would try to get the domain and trademark together. One isn't a whole lot of good without the other, I would think. Not if you are paying a premium and sitting on a mountain of risk.

Good luck with it though. It is hard to tell you what to do not really knowing the specifics, and it is easy to understand that needs to remain a secret, as well.

But in the end we are just jawing and I think you will have to get a patent attorney to help you out with this. It could be tricky, after all.

-Doug

 

[blaknite]

The information I read was on the uspto website and I could easily have misinterpreted it. Perhaps I'm seeing what I want to... Anyhow I have sent an email to the trademark office with detailed questions. I did include the name in the email, so hopefully that wasn't a mistake.

I am sure the name and trademark combo could potentially sell in the 100k+ range to the right enduser. I am not sure how to go about finding who really owns the trademark and making an offer. On the trademark database it lists the company name and the name of the lawyer who filed the trademark(s) for the company. I'm sure the true owners must know the value, but they probably don't realize they have it to sell.

If I were to aquire the name through a uspto technicality they'd get a letter saying the trademark was no longer theirs and I suspect they wouldn't do anything about it. If they got a letter from me or a call/visit its definately going to trip the "I have something valuable" meter and the price will go right out of my reach.

This will probably never happen so I don't have a lot of hope for the deal. Still I have walked away from an idea before that would have made me a millionaire If I hadn't been so damn stupid. I knew the potential was there but I just didn't realize "I" could have been the one to do it. I can't walk away from a deal like this without at least trying.

 

[Domainating]

Well, good luck to you. I do think that the USPO would issue them a notice saying that their mark was being challenged as long as it is theirs, but I am sure that your patent lawyer can straighten that out.