What if I register a name and much later somebody gets a trademark for it?

[Erdy]

I'm talking about 5 letter names that you make up just because they sound good. Lets say I register "vanpo.com" which has no meaning.

Assuming much later after I register this name somebody else thinks this is a good name and establishes a company and gets the trademark with this name. What would happen?

Notice that I'm talking about a case where it is absolutely impossible for me to know about the company because it doesn't exist yet, not even as a known idea. If it had been mentioned on media than we could argue bad faith but thats not the case. What would happen? Would I lose the name?

 

[Ronald Regging]

Just the fact that you registered the domain prior to them using it in commerce should establish your rights to the domain. Much as the case with adsense.com, whose owners registered the domain before Google even existed.

 

[Erdy]

Thanks for the example. I didn't know about the adsense case. This pretty much clears the issue. I'm starting to understand the logic behing trademark and domain name issues.

 

[ablaye]

I tried to go to http://www.adsense.com but it redirects to google.
Are you sure that adsense.com isn't owned by google?

 

[namanimal]

the whois for adsense.com says its owned by google inc. sure they paid dearly for it

 

[Dave_Z]

Are you sure that adsense.com isn't owned by google?

http://www.iwhois.com/index.php?domain=adsense&tld=com&lookup=Lookup&clean=1

Registrant:
Google Inc. (DOM-1550091)
1600 Amphitheatre Parkway Mountain View CA 94043 US

Domain Name: adsense.com

There's one possible exception, MarcelProust:

1. You register vanpo . com and put PPC ads.

2. A month later, I sell bowling equipment I name vanpo. (Pure coincidence, I
assure you. :D)

3. 1 year later, I file an application at the USPTO for selling bowling products
named vanpo (bowling ball, shoes, ball cleaner, etc.). It eventually gets done
and approved.

4. A month or so after, vanpo . com shows PPC for competing bowling things.

The minute I find that out, I send out the C&D because you're riding on my
trademark for vanpo bowling products.

 

[Ronald Regging]

adsense.com is now owned by Google, but for a long time it had not been. The original owners registered the domain before Google even existed, so therefore Google had no case against them. More than likely, the reason Google now owns it, is because the original owner sold it to another party, a party whose rights to the domain did not precede Google's. Kind of a messed up situation if Google just took it from them, or if the original owner didn't disclose this possibility at the sale, but I guess the second party should have done some research.

 

[labrocca]

Holy crap! I wonder if this now weakens adsense domain names. Google could have always gone after them but it could be disputed that their TM wasn't solid. Now they may decide to go after domainers with adsense names..interesting.

I wonder what they paid and what the agreement as for the TM was. I am sure this was a six-figure deal.

 

[Ronald Regging]

Holy crap! I wonder if this now weakens adsense domain names. Google could have always gone after them but it could be disputed that their TM wasn't solid. Now they may decide to go after domainers with adsense names..interesting.

I wonder what they paid and what the agreement as for the TM was. I am sure this was a six-figure deal.

They didn't buy the domain or TM from the original mark holder... The mark holder got sick of the situation, went through a private broker and sold the domain to another party. Mysteriously, one month after the sale, Google now owns the domain. This is what was reported thus far. Obviously, anything beyond this point is speculation, but a likely possibility is that the new owner may have been in possession of the domain after legally purchasing it, but had absolutely no legal grounds to defend their right to keep it against those of Google... The original company still operates on adsense2.com, so it doesn't stand to reason that the original TM was part of the domain sale...

Whether Google paid the new owner for the domain or just outright took it, we don't know, but legally speaking, they had every right to do so.

And as to your first part, like I said, I believe the original owners still hold the TM, so Google's TM strength shouldn't have changed at all...

 

[Dave_Z]

Or it's possible the other party was actually Google in disguise. :D

 

[Joe]

yeah
i cant see any problem with that
the adsense.com is a good example

Joe

 

[labrocca]

I am sure if it was taken by force we would have heard about it. Interesting about the TM though.

 

[patches]

I regged a domain before a company trademarked the name. Does this mean that I can never sell the domain to someone else. This doesn't seem fair.
Most domainers do not trademark their domains. Does this mean that if a company wants your domain they can just trademark it? Then if you sell it, they can take it away from the new owner? I have a mini site started that has nothing to do with their products. If someone buys my site is there a chance they could still lose the domain? If this is the case alot of domain holders could be holding worthless domains.

 

[DNQuest.com]

If you had a site up before a TM is established, unless you show bad faith, companies can't really touch you. You are able to sell the domain to someone else and even the TM holder (provided you don't shoot yourself in the foot, but that is another story). Now, the new owner could be liable for squatting, since he bought the domain after the TM was established. IT would depend on usage. But if you have a site up and he is buying the name and the site. A contract should be drawn up stating the sale of the domain, website, all copyright and TMs (of your site) and "goodwill". Goodwill is the nontangible asset which shows the buyer was looking at the site as it was, and not just as a domain name. It is a bit confusing, but basically, the new owner is taking over everything and continueing with the site, thus not looking like it is a new registration, but continued registration.

 

[domainliferox]

You gotta defend your trademark, no matter how long or shortly after you register it..as they say..police it or lose it.

 

[DNQuest.com]

You gotta defend your trademark, no matter how long or shortly after you register it..as they say..police it or lose it.

In order to be provided protection of a TM, it must be actively used in commerce. Just because you registere a domain does not mean it is a TM automatically.. you have to attain it through usage.