Trademark searches

[SpongyBob]

Hi,

So basically I want to do an extensive online trademark search of a fairly brandable "word" (it's a short letter .com I own - it's not an actual word, it just sounds good, if you know what I mean). I already know it's fairly brandable because someone's already registered a US trademark of it - but luckily for me they registered it after I bought the domain.

What I want to do is make sure I've got all my bases covered before I consider selling it, and make sure there isn't some earlier trademark lurking in who knows where.

So is there any resource out there that can search all/almost all the trademark databases in the world?

Or am I going to have to do this the painful way and try and find every online trademark database for every country? If so, anyone know a resource with links to all the online trademark databases available?

Thanks for any help.

 

[SpongyBob]

A company name, or a stock ticker symbol, is not a trademark unless it is used as a trademark.

It's not clear what you mean by "companies using *myname* in various forms without a trademark". They are either using the term as a trademark - i.e. a brand of goods or services - or they aren't. Again, there is no particular "magic" about whether their mark is registered or not. I might or might not have a license for my dog, but whether or not I own a dog does not depend on whether I've registered my dog with the appropriate government agency. If it has four legs, fur, a tail and says "woof" - it's a dog.

But, let's go back to my first sentence. The stock ticker symbol is assigned by the exchange as an identifier of that company's stock. For example, Verisign markets domain registry services under the mark "VERISIGN". They don't use "VRSN", their stock ticker symbol, as a mark for any goods or services.

Company names, or trade names, are identifiers of the company in question. Whether or not a company name functions as a trademark depends on whether the company uses its name as a trademark for its goods or services. For example, I might run "Bigco Inc." and Bigco Inc. sells a popular line of widgets called the "WonderWidget". Consumers recognize these widgets in the market as the "WonderWidget", and not as "the widgets that Bigco Inc. makes". In that situation, "Bigco Inc." is merely a company name or trade name, but it is not a trademark.

Here's an example of that distinction in action:

http://www.adrforum.com/domaindecisions/1684372.htm

In the montezuma.com dispute, there was a company called "Montezuma Welding and Manufacturing Inc." which was incorporated in 1988. For many years, they sold a line of toolboxes which were branded "CPL" toolboxes (the "CPL" was an acronym they came up with for a unique locking mechanism). They did not call them "Montezuma" toolboxes until much later, after the domain name was registered by the Respondent.

After they changed their branding to "Montezuma" on the toolboxes, they came after the domain name, claiming they had been "Montezuma", as a company, for many years.

But that's not the point. The point was when did they start using "Montezuma" as a trademark.

Now, quite frequently, companies use their trade name as a trademark. Apple Computer makes Apple computers.

So, getting back to my point about Google... if you want to find out whether someone is "using the term" in some manner, then Google is a much better way of finding that out than by looking in trademark databases. In fact, trademark registrations can long outlast actual abandonment of a mark. In the US, trademark registrations are renewed at 6 years, and then 10 year intervals. So, you can easily come across a 25 year old US trademark registration which, in actual reality, was abandoned eight years ago through non-use.

But once you have found some kind of "use", then the next question is whether that "use" is as a trademark, a trade name, or something else entirely. It requires engagement of your brain and learning a bit more about what trademarks are and how they work. If this stuff all depended on some kind of mechanical rule - "is it in some database or not" - then what do you think trademark lawyers do all day?

I never said a stock ticker a name was a trademark. My main reason for mentioning it was I was switching focus a little to try and assess the domain's value. I figured it adds desirability if *MYNAME* is also exactly the company's stock ticker name, which it is. It hints also, to me, that they'd prefer to use *MYNAME* as their name instead of *MYNAME*-*Widgets*. I'm getting in the way of that with my ownership of the domain.

What I mean by companies using the name, but not having a trademark, is that I discovered a lot of extra websites i.e. RATCHETS*MYNAME*.WHATEVER and *MYNAME*RATCHETS.WHATEVER's that don't show up on the trademark database, so clearly haven't bothered to register a trademark, but still use the name for a website.

It's clearly a highly desirable brand-type word, else I wouldn't have got back 3 pages of trademarks on my search and a fair few *MYNAME* using websites on top. (something I felt when I bought it)

I appreciate your belief that google is superior to trademark databases. But the one crucial thing that a google doesn't provide is HOW LONG a company's been using the name. Something which I feel is crucial to my case, as I've owned the domain over 10 years and there's now a ton of users of the name in some shape or form, some with registered trademarks, some not. They'll all have no case against me if their usage is less than 10 years, unless I do something dumb that looks like "passing off".

You have educated me on something, the fact that a company can bring a successful UDRP challenge even if they don't have a registered trademark, if they've been claiming usage of an unregistered trademark from before the domain registrant took ownership. I think that's what you're saying. Correct?

(By the way, are abandoned trademarks revivable and then usable in a UDRP challenge?)

In this respect, though, the relatively big bucks company that I think is behind the offer I've had has only been in existence two years, so I'm safe from them - of course they might try a UDRP challenge away, if they find my price outrageously high, but I'd be prepared to pay the money to defend it robustly with a 3 man panel and lawyer, even if costs me $5k.

 

[SpongyBob]

I think what I'm trying to work out if there's any correlation between how much a medium to big public company has in the bank + how well they're doing, and how much they're prepared to pay for a domain that would become their main business website. Perhaps it's impossible to come to a rough calculable ratio, as it's dependent on other factors, such as the attitude of the bosses and legal team.

I think I'm really looking for advice off someone who as experience selling fairly high value domains to fairly big companies. I'm not sure there's anyone on NamePros with that experience, though.

 

[jberryhill]

You have educated me on something, the fact that a company can bring a successful UDRP challenge even if they don't have a registered trademark, if they've been claiming usage of an unregistered trademark from before the domain registrant took ownership. I think that's what you're saying. Correct?

That's correct. "About us" pages on websites, press releases or company databases at state company registration websites often provide useful information on how long a company has been around.

(By the way, are abandoned trademarks revivable and then usable in a UDRP challenge?)

Depends on what you mean by "abandoned trademarks". Someone may neglect to renew their federal registration and continue using the mark. In that situation, the registration lapses, but the underlying trademark is not "abandoned".

If by "abandoned trademark" you mean that someone truly abandoned use of the mark for a number of years, and then started using it again then, no, they also lose their priority.