Trademark - Status: 710 - Cancelled - Section 8

[Kuffy]

This is another of my quest for knowledge threads.
I recently purchased the name MeatyWraps.com. It wasn't very expensive, because it has a cancelled trademark associated with it. I'm not asking for comments on the value of the name itself, but I would like some advice on the problems and restrictions in using this name. As far as I can gather the name was used in association with dog food, and this is the status page for the trademark,
https://trademarks.justia.com/770/32/meaty-77032357.html

My feeling is that I should use the name and see what happens. As a safety precaution, I should steer clear of dog (or other pet ) food. What do you guys think?

 

[Justin Matmor]

The trademark is not registered.

 

[Kuffy]

The trademark is not registered.

But it was, and the registration has been cancelled. There seems to be a body of opinion that feels that the original registrant still has rights, and others seem to feel that the rights have been waived by not renewing the trademark. I wondered what would happen if the original registrant tried to renew the trademark after I had started to use it.

 

[Justin Matmor]

As long as you are not competing in the same industry and geographic area, you will be fine.

 

[techname]

It seems it was cancelled because the registrant failed to file a declaration of use.
http://tsdr.uspto.gov/#caseNumber=77032357&caseType=SERIAL_NO&searchType=statusSearch

Not an expert on this, but the registrant could still have a common law right from actual use of the TM. This is often signified by the small TM symbol next to a company's mark, rather than the R in a circle mark.

 

[Kuffy]

It seems it was cancelled because the registrant failed to file a declaration of use.
http://tsdr.uspto.gov/#caseNumber=77032357&caseType=SERIAL_NO&searchType=statusSearch

Not an expert on this, but the registrant could still have a common law right from actual use of the TM. This is often signified by the small TM symbol next to a company's mark, rather than the R in a circle mark.

Interesting - so if I used the site to sell domain packages, and I added a TM symbol, would I establish a common law right to the trademark for domain sales?

 

[techname]

Interesting - so if I used the site to sell domain packages, and I added a TM symbol, would I establish a common law right to the trademark for domain sales?

That's my understanding, although I don't think you have to even add the TM symbol to acquire such limited rights. However, I think you could find a better name for domain sales : )

 

[Kuffy]

That's my understanding, although I don't think you have to even add the TM symbol to acquire such limited rights. However, I think you could find a better name for domain sales : )

I've got loads of those like BuyAny.com, DomainPX.com, and probably about 30 others. However I like to be a bit different, and that probably reduces the market size, but I think it may increase the sales prospects in that reduced market. Anyway it's fun to play - after all who else would think of "Meaty wrap domain packages"

I can see the slogan now - "Meaty wraps, guaranteed to be pigeon poo free".

 

[jberryhill]

It was a Supplemental registration in the first place.

https://en.wikipedia.org/wiki/Supplemental_Register

It was refused as descriptive, amended to the Supplemental Register and was never a presumptively valid mark on the Principal Register.

 

[Kuffy]

Thanks for that reply.

I've decided to use it for a domain name plus package, and I guess that is so far from any previous use, that I will be OK anyway. The original idea was to sell it for feeder traffic for a restaurant.

 

[jberryhill]

There seems to be a body of opinion that feels that the original registrant still has rights, and others seem to feel that the rights have been waived by not renewing the trademark.

...and there is a body of opinion that wants to hang itself until dead after the 99999999th repetition of weird ass things that domainers repeat to each other like half-remembered legends around a campfire. It's not even a question of "what domainers don't know", but "what domainers think they know, but which are completely bass ackwards."

The initial problem here is the failure to understand what the "Supplemental" status in the USPTO record meant in the first place.

But, be that as it may, I'll say this again. Tattoo this on a sensitive area of your body:

WHETHER OR NOT SOMEONE DOES NOR DOES NOT HAVE A TRADEMARK IN THE UNITED STATES DOES NOT DEPEND ON WHETHER SOMEONE DOES OR DOES NOT HAVE A REGISTRATION FOR THAT TRADEMARK.

The salient question, and again leaving aside the fact that it was only a Supplemental in the first place, is ARE THEY STILL USING THE MARK?

You don't "get trademark rights" in the US by registering a mark. You don't "lose trademark rights" in the US by failing to renew the registration. Even if you HAVE a trademark registration, if you stop using the mark for three years (and the registration might last ten years), then you have presumptively abandoned the mark.

The following statements are true:

1. There are people who have trademarks, but do not have trademark registrations.

2. There are people who have trademark registrations, but don't actually have trademarks.

If you find something in the USPTO it is PART of a larger picture, but it is not the entire picture. It provides some clues, but it does not provide an answer in all cases.

What matters, if you see an expired registration (and, one more time, it wouldn't matter much since you blew right past the "Supplemental" status of this one in the first place) is this:

ARE THEY STILL USING THE MARK?

Well, gee, I mean, how would anyone go about figuring that out.... A couple of ways:

GOOOOOOOOOGLE!!!!!!! - I can't for the life of me figure out why domainers spend so much time coming up with wrong answers based on not understanding trademark registrations, when the most amazingly comprehensive search engine on the planet is mere clicks away. What better way to figure out "I wonder if someone is selling anything called 'meaty wraps'" than by using the world's biggest machine for advertising and selling things. Just a thought.

But there are other things one can glean from a USPTO record. This registration is owned by:

"Foster & Smith, Inc. CORPORATION WISCONSIN 2253 Air Park Rd Rhinelander WISCONSIN 54501"

(and if you click the "assign" button, you can figure out if anyone else may have purchased the mark)

So, one of the things to look for in this sort of situation is "Does this company even still exist?"

Well, yes, yes they do. You know how you find that out? GOOOOOOOOOOOGLE!!!!!!!

Waddya know.. it's right here: http://www.drsfostersmith.com/

It turns out they have their own website. Where they sell their stuff. You think maybe if they were still selling "meaty wraps" you might find them doing that on their own website? They even have a search bar on their own website where you can search for their products.

Here's another clue that comes from just using GOOOOOOOOOOOGLE!!!!!!!

You can even narrow down the search by using additional terms to "meaty wraps", like "foster" and "smith" to make sure that you are going to pick up their stuff. Interestingly, had you done that in the first place, you'd come across this article:

http://www.drsfostersmith.com/pic/article.cfm?aid=1769

Well, looky there, an old article on their site with a container of "Meaty Wraps" on it. Hmmm... I wonder what happens if you click on that can of Meaty Wraps and try to buy it.... goes to a "page not found" page.

So, let's add this up... you have a cancelled registration, can't find the product in Google, can't find the product on the TM registrant's own website, and their old article mentioning the product goes to "page not found".

What might all that mean?

And if you want to turn real pro, it turns out they have a TELEPHONE NUMBER on their website. You can call them up, and say, "Hey, my dog is jonesing for 'Meaty Wraps' and I have to get him some. Where can I buy them?"

One of two things will happen, either they will tell you where to score some Meaty Wraps, or they will tell you, "Oh, we quit making those five years ago."

THEN you have your answer.

 

[SirDrago]

...and there is a body of opinion that wants to hang itself until dead after the 99999999th repetition of weird ass things that domainers repeat to each other like half-remembered legends around a campfire. It's not even a question of "what domainers don't know", but "what domainers think they know, but which are completely bass ackwards."

The initial problem here is the failure to understand what the "Supplemental" status in the USPTO record meant in the first place.

But, be that as it may, I'll say this again. Tattoo this on a sensitive area of your body:

WHETHER OR NOT SOMEONE DOES NOR DOES NOT HAVE A TRADEMARK IN THE UNITED STATES DOES NOT DEPEND ON WHETHER SOMEONE DOES OR DOES NOT HAVE A REGISTRATION FOR THAT TRADEMARK.

The salient question, and again leaving aside the fact that it was only a Supplemental in the first place, is ARE THEY STILL USING THE MARK?

You don't "get trademark rights" in the US by registering a mark. You don't "lose trademark rights" in the US by failing to renew the registration. Even if you HAVE a trademark registration, if you stop using the mark for three years (and the registration might last ten years), then you have presumptively abandoned the mark.

The following statements are true:

1. There are people who have trademarks, but do not have trademark registrations.

2. There are people who have trademark registrations, but don't actually have trademarks.

If you find something in the USPTO it is PART of a larger picture, but it is not the entire picture. It provides some clues, but it does not provide an answer in all cases.

What matters, if you see an expired registration (and, one more time, it wouldn't matter much since you blew right past the "Supplemental" status of this one in the first place) is this:

ARE THEY STILL USING THE MARK?

Well, gee, I mean, how would anyone go about figuring that out.... A couple of ways:

GOOOOOOOOOGLE!!!!!!! - I can't for the life of me figure out why domainers spend so much time coming up with wrong answers based on not understanding trademark registrations, when the most amazingly comprehensive search engine on the planet is mere clicks away. What better way to figure out "I wonder if someone is selling anything called 'meaty wraps'" than by using the world's biggest machine for advertising and selling things. Just a thought.

But there are other things one can glean from a USPTO record. This registration is owned by:

"Foster & Smith, Inc. CORPORATION WISCONSIN 2253 Air Park Rd Rhinelander WISCONSIN 54501"

(and if you click the "assign" button, you can figure out if anyone else may have purchased the mark)

So, one of the things to look for in this sort of situation is "Does this company even still exist?"

Well, yes, yes they do. You know how you find that out? GOOOOOOOOOOOGLE!!!!!!!

Waddya know.. it's right here: http://www.drsfostersmith.com/

It turns out they have their own website. Where they sell their stuff. You think maybe if they were still selling "meaty wraps" you might find them doing that on their own website? They even have a search bar on their own website where you can search for their products.

Here's another clue that comes from just using GOOOOOOOOOOOGLE!!!!!!!

You can even narrow down the search by using additional terms to "meaty wraps", like "foster" and "smith" to make sure that you are going to pick up their stuff. Interestingly, had you done that in the first place, you'd come across this article:

http://www.drsfostersmith.com/pic/article.cfm?aid=1769

Well, looky there, an old article on their site with a container of "Meaty Wraps" on it. Hmmm... I wonder what happens if you click on that can of Meaty Wraps and try to buy it.... goes to a "page not found" page.

So, let's add this up... you have a cancelled registration, can't find the product in Google, can't find the product on the TM registrant's own website, and their old article mentioning the product goes to "page not found".

What might all that mean?

And if you want to turn real pro, it turns out they have a TELEPHONE NUMBER on their website. You can call them up, and say, "Hey, my dog is jonesing for 'Meaty Wraps' and I have to get him some. Where can I buy them?"

One of two things will happen, either they will tell you where to score some Meaty Wraps, or they will tell you, "Oh, we quit making those five years ago."

THEN you have your answer.

I don't know about anyone else but after reading this well written and professional tutorial on "How to"... I must say that I'm diffenetly jonesing for meaty wraps.
Well done Sir.

 

[Kuffy]

Thank you for that answer, but you are wrong in assuming that I did not do any research. Google is stuffing itself down the toilet at the moment, and I got a lot of references for meaty wraps ( well over 1,000) this included the failed registration, and the point that it was a descriptive phrase. Also, I have no connection with dog food - I don't even have a dog. My purpose in starting this thread was to open the topic for discussion. As you point out, many domainers seem to have problems with trademarks., and hopefully this thread has been useful for the community.

 

[techname]

I don't know about anyone else but after reading this well written and professional tutorial on "How to"... I must say that I'm diffenetly jonesing for meaty wraps.
Well done Sir.

Me too! They do look tasty, much tastier than the dog snacks available when I was a pup ; )

 

[jberryhill]

I don't even have a dog.

Well, there's your first problem right there.

 

[jberryhill]

hopefully this thread has been useful for the community

....which is indeed the point. Don't take my sarcasm personally. If you want answers without sarcasm, then you have to be a paying client. Otherwise, I find venting here to be personally therapeutic. Consider it my "fee".