Trademark?

[Want2learn]

So I was checking out domains. I was actually in hand reg mode. I know I know. Anyways, I came across what I thought would be a good domain. I googled it. A business came up. I clicked the link. It appears business is out of business. I went and checked trademark. Trademark was abandoned over 1 year ago. I went ahead and registered domain. Am I in the clear? Should I submit a trademark request for this business and domain?

 

[1Darko]

So I was checking out domains. I was actually in hand reg mode. I know I know. Anyways, I came across what I thought would be a good domain. I googled it. A business came up. I clicked the link. It appears business is out of business. I went and checked trademark. Trademark was abandoned over 1 year ago. I went ahead and registered domain. Am I in the clear? Should I submit a trademark request for this business and domain?

Is it a generic name or typo?

 

[Justin Matmor]

you are in the clear

 

[Want2learn]

I know Im being slightly cryptic, but I am hopeful you understand some of my paranoia.

I am going out of industry just to illustrate what I am talking about.


People buy diamonds. People finance diamonds.

Say there was a company called Finance Diamonds. Their website was financediamonds.com I come along and I see that diamonds is an extension I can use. I see that finance.diamonds is available.
Are they entitled to that domain?

The trademark has expired. I think they have changed names, though Im not sure why they wouldn't have kept the trademark . . .

 

[jberryhill]

I think they have changed names, though Im not sure why they wouldn't have kept the trademark . . .

In the US, you cannot "keep" a trademark absent use of the mark in commerce in connection with the relevant goods and services. Trademark rights in the US derive from USE of the mark, not filing papers with some government office. It's like asking why someone didn't "keep their dog license" after their dog died.

 

[Want2learn]

In the US, you cannot "keep" a trademark absent use of the mark in commerce in connection with the relevant goods and services. Trademark rights in the US derive from USE of the mark, not filing papers with some government office. It's like asking why someone didn't "keep their dog license" after their dog died.

That makes sense. So then it also would not be wise for me to try and file a trademark request for the name as I am not going into that business . . . ?

 

[Want2learn]

In the US, you cannot "keep" a trademark absent use of the mark in commerce in connection with the relevant goods and services. Trademark rights in the US derive from USE of the mark, not filing papers with some government office. It's like asking why someone didn't "keep their dog license" after their dog died.

Let me ask you this then! If a legit business decides to get up and running and wants that name, will I have to cough up the domain in the future?

 

[jberryhill]

So then it also would not be wise for me to try and file a trademark request for the name as I am not going into that business . . . ?

Not going into what business? If, in your example, the business is financing diamond purchases, and your proposed mark is "FINANCE DIAMONDS", then it doesn't make sense to seek registration even if you ARE going into that business.

If a legit business decides to get up and running and wants that name, will I have to cough up the domain in the future?

Probably not, depending on the circumstances, but it can impact the utility and market for the domain name if a later business obtains rights in a corresponding mark.

 

[Want2learn]

Well no need to beat around the bush now right . . . profund.mortgage is the domain and former business. Looks like they rebranded under a new name. I have to say that I am a little gun shy . . . But I actually love the name ProFund.Mortgage

Pro as in professional . . . or do I mean Pro as in for? Makes ya think . . .

 

[jberryhill]

I went and checked trademark. Trademark was abandoned over 1 year ago.

The trademark has expired.

Both of these statements are wrong.

Let's start from the top....

First off, they never obtained registration of the mark for which they applied. They filed an application, and it was refused, and then they abandoned the application.

Why?

Well, that's worth a look-see:

http://tsdr.uspto.gov/#caseNumber=86897710&caseType=SERIAL_NO&searchType=statusSearch

If you check out the "documents" tab, and then click on the "Office Action Outgoing", you come to this:

http://tsdr.uspto.gov/documentviewer?caseId=sn86897710&docId=OOA20160520125038#docIndex=2&page=1

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL


Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2861941. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

The applicant has applied to register PROFUND MORTGAGE in standard character form for “mortgage lending services.” The registered mark is PROFUNDS in standard character form for “financial services, namely investment advisory and investment management services.”

The Office Action goes on for quite a bit, and includes a number of other observations.

In other words, their application was abandoned, because it had been refused by the USPTO on the ground that it was confusingly similar to an existing registered mark in the general field of financial services. THAT mark is:

Word Mark

PROFUNDS
Goods and Services IC 036. US 100 101 102. G & S: FINANCIAL SERVICES, NAMELY INVESTMENT ADVISORY AND INVESTMENT MANAGEMENT SERVICES. FIRST USE: 19971110. FIRST USE IN COMMERCE: 19971110
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76364004
Filing Date January 29, 2002
Current Basis 1A
Original Filing Basis 1A
Published for Opposition April 20, 2004
Registration Number 2861941
Registration Date July 13, 2004
Owner (REGISTRANT) ProFund Advisors LLC LIMITED LIABILITY COMPANY MARYLAND 7501 Wisconsin Avenue, Suite 1000 Bethesda MARYLAND 208146527
Attorney of Record Ryan E. Thomas
Type of Mark SERVICE MARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20140725.
Renewal 1ST RENEWAL 20140725
Live/Dead Indicator LIVE

The Examining Attorney went on to demonstrate by use of yet other registrations that "investment advisory" and "investment management services" are frequently provided by entities which also provide mortgage services, so consumers might assume that there is some overlap between those categories.

Having received this information - i.e. that their proposed mark might be deemed confusingly similar to an existing financial services business - they apparently changed their name.

Now, what might that suggest to you, concerning the desirability of a domain name for mortgage services, for which there is at least one opinion directly accessible to you that it is confusingly similar to a previously-registered and alive-n-kicking trademark?