Would I be able to start this website on a near-trademarked name?

[markfromslo]

The domains and trademarks I'm using below are not the real ones, but made up ones that are very similar to the real situation I have a question about.

Let's say that I own TeaLover.com. And there is no trademark on Tea Lover. However, there is a trademark on Tea Lovers, filed in International Class 030, US Class 046. The registrant owns the domain name TeaLovers.com, but there is nothing on the name. There seems to be no business, at least via search, for Tea Lovers.

Would I be able to safely start a website about Tea on my TeaLover.com site, without stepping into a legal issue with the Tea Lovers trademark?

Again, these are not the real names and trademarks, but reflect the real situation exactly.

 

[enlytend]

Would you be using it for the same class of goods and services? If you're using it for something completely different you're probably ok (even a lawyer couldn't advise you on that without knowing the details). If it's the same class, then not a good idea. The issue is, is it reasonable someone might confuse you with the other business?
An "s" doesn't make it a distinctly different mark, lots if room for confusion. But if they sell tea under their name and you sell furniture under yours, then the businesses are distinct and you should be able to co-exist.

 

[markfromslo]

It would be the same class. I'b be writing about tea, and any adsense ads that come up would be selling tea. It's just so frustrating because the trademark owner does not seem to be conducting business with the trademark.

 

[mhdoc]

Another option would be to put legal layers between you and the domain so that if problems come up you would not have your personal net worth or any significant assets at risk.

Put the domain name into a corporation, have your LLC operate the business using the domain leased from the Corp., use a limited partnership to hold the controlling interest in the LLC, etc.

The tradeoffs are the cost of setting that stuff up, and your tolerence for managing the details that keep the protection functioning.

To use this approach you also need to have your spouse/significant other on board so when you get served legal papers you are both confident you are untouchable.

 

[markfromslo]

Another option would be to put legal layers between you and the domain so that if problems come up you would not have your personal net worth or any significant assets at risk....

If it were a big business plan I had in mind I would do that, thanks. But it's not super important.

Another thing I could do would be to approach the guy and ask to buy his domain, along with the trademark. I've never purchased a trademark from someone, but I assume it's relatively simple. I don't know though if it's a simple matter of filling out an assignment of ownership form at the USPTO or if I have to show that I am in the business myself, as if I were have to have filed for the TM myself originally.

If there is no sign of his business anywhere, and there is nothing on his domain name, it could be that he had a idea years ago, got excited and bought the trademark and name, and has since lost interest and would love a couple thousand dollars.

 

[WritersWrite]

It's just so frustrating because the trademark owner does not seem to be conducting business with the trademark.

This complicates things.

I am under the impression that, once you acquire a trademark, you are obligated to actually use it. Furthermore, I thought that you actually had to be using it in business already (or be moving towards an imminent launch) in order to get the trademark in the first place.

For instance, if you get a trademark on "XYZ" logo for hats and t-shirts, you have to actually be producing and selling XYZ hats and shirts, and continue to do so, in order to protect the trademark.

I do not know what would be considered too inactive in order to jeopardize the trademark however, I am fairly certain that you cannot secure a trademark and sit on it indefinitely for some future use that never seems to happen.

 

[urljunky]

It is the most common way a company can lose it's trademark. It's called abandonment. And there are papers you can file to get a trademark taken away from someone who is not using it for anything. Then file it for yourself.

 

[markfromslo]

It is the most common way a company can lose it's trademark. It's called abandonment. And there are papers you can file to get a trademark taken away from someone who is not using it for anything. Then file it for yourself.

I looked around the USPO site and searched around and could not find a way to file to petition that a trademark be abandoned.

 

[pranker]

i wonder about this same exact issue myself, with tealover vs tealovers, with the tealovers trademark owner having a dormant blank webpage. ill be keeping an eye on this thread.

 

[urljunky]

I looked around the USPO site and searched around and could not find a way to file to petition that a trademark be abandoned.

I believe it has to be dormant for 3 years. If you Google abandoned trademarks you'll get all kinds of info.