how to prove somebody's trademark is not in use / abandoned?

[noviceguy]

What is the name of your state (only U.S. law)? I'm in South Carolina. He's in Massachusetts.

I have been searching for a domain name for a new business. I found a name I like--a good idea for a brand--and saw that the .com domain is already registered to a man in Massachusettes. It's not an active website; the url shows nothing. So I emailed the owner of the .com domain. He said the domain is not for sale, which isn't a huge problem, because I could use a .org domain instead. But he further added that the name is trademarked. It's a very generic name, like "Health Coach" (It's not "health", but the second part is "coach".)

However, there is no record of a business in his city in Massachusetts with that name. Nor, as I said, is there a website. So, since a trademark is abandoned when it goes unused (correct?), how do I document that it's not being used currently? I don't want to proceed, and then perhaps he sees my .org and decides to build a 5-minute website and sue.

His trademark comes up for renewal in November.

Thanks.

 

[adjusterjack]

A trademark is not abandoned just because it's not used and he obviously hasn't abandoned it because he told you so.

There's no way for anybody to even guess if you would be infringing if you can't or won't show the real names of both businesses and explain what each does.

I realize that might not be wise on a public forum so I suggest you consult a trademark attorney for appropriate advice. The small amount of money you spend on an attorney now will prevent you from spending a ton of money defending a lawsuit.

 

[quincy]

What is the name of your state (only U.S. law)? I'm in South Carolina. He's in Massachusetts.

I have been searching for a domain name for a new business. I found a name I like--a good idea for a brand--and saw that the .com domain is already registered to a man in Massachusettes. It's not an active website; the url shows nothing. So I emailed the owner of the .com domain. He said the domain is not for sale, which isn't a huge problem, because I could use a .org domain instead. But he further added that the name is trademarked. It's a very generic name, like "Health Coach" (It's not "health", but the second part is "coach".)

However, there is no record of a business in his city in Massachusetts with that name. Nor, as I said, is there a website. So, since a trademark is abandoned when it goes unused (correct?), how do I document that it's not being used currently? I don't want to proceed, and then perhaps he sees my .org and decides to build a 5-minute website and sue.

His trademark comes up for renewal in November.

Thanks.

Please do not use real names here. Examples are fine. Real names will be deleted. Thanks.

First, the .org top level domain (TLD) was designed for non-profit organizations. Dot com (.com) is for commercial enterprises. But there are other less-popular choices available.

Second, a domain name registration does not on its own confer trademark rights to the name. A domain name only functions as a trademark when the name in the domain name is also used as an identifier for a business' goods or services.

A trademark holder does not have to federally register a trademark to have rights to a name and having a web presence is not necessary. The rights to a name are gained through the use of a name in commerce.

A mark is not necessarily abandoned if you are not seeing the name turn up with an online search, in other words. There must be evidence other than this to show that the holder of a trademark has stopped using the mark.

Because registration is not required, the fact that federal registration of a mark has been allowed to lapse is not (necessarily) abandonment. If a mark has not been used continuously for three or more years, however, that is prima facie evidence that a mark has been abandoned. But this non-use can be challenged by the first trademark holder, with the owner of the mark potentially preventing the use of the mark by others. Many companies will temporarily halt use of a mark when revising a product, for example, and this is not abandonment.

It can be a risk to use a trademark already in existence. It is always best to create something unique as an identifier for your company so it stands out to the consuming public.

That said, companies with the same or similar names can peacefully coexist. There are several factors that are considered in determining if one mark infringes on the rights of another, including the goods/services being marketed, the consumers targeted, the distinctiveness of the marks ... and, most importantly, if consumers are likely to be confused by the dual use of a mark.

 

[FlyingRon]

First, the .org top level domain (TLD) is reserved for non-profit organizations. Dot com (.com) is for commercial enterprises. But there are other less-popular choices available.

"Reserved" is a strong word. Actually, you're free to register any domain in either .com or .org whether you are profit or non-profit.

By the way, I believe i was the first registrant in the .org domain back around 1986 or so with "soup.org."

Quincy is right that a domain name is orthogonal to the concept of a trademark. A domain name may include your trademark (such as apple.com or coke.com) or it can be used as a domain for example (amazon.com) similar to a phone number. 1-800-FLOWERS is a trademark (and a phone number) or contain it (1-800-HILTONS).

You get trademark rights from using it in commerce rather than creating a name and "squatting on it" rather than using it.

Alas domain dispute rules are not controlled by any sane rule of law.

 

[quincy]

"Reserved" is a strong word. Actually, you're free to register any domain in either .com or .org whether you are profit or non-profit.

By the way, I believe i was the first registrant in the .org domain back around 1986 or so with "soup.org."

Quincy is right that a domain name is orthogonal to the concept of a trademark. A domain name may include your trademark (such as apple.com or coke.com) or it can be used as a domain for example (amazon.com) similar to a phone number. 1-800-FLOWERS is a trademark (and a phone number) or contain it (1-800-HILTONS).

You get trademark rights from using it in commerce rather than creating a name and "squatting on it" rather than using it.

Alas domain dispute rules are not controlled by any sane rule of law.

One major problem I see for noviceguy is that he knows there is already someone claiming trademark rights in the name he wants to use. Whether the claim has merit or not, a trademark challenge can be a messy way to start a business.

Here for "construction and definitions" (abandonment, use in commerce, etc) is a link to the text of Lanham Act's section 1127: https://www.law.cornell.edu/uscode/text/15/1127

 

[noviceguy]

I've written two replies already, but the system isn't showing them... Sorry. I didn't abandoned the conversation.

 

[quincy]

I've written two replies already, but the system isn't showing them... Sorry. I didn't abandoned the conversation.

If you tried to include links in your posts, the posts might have been flagged for moderator review. They may eventually show up (with links removed) or they may be lost forever. Hard to say.

I am glad you haven't abandoned us, though.

 

[noviceguy]

No I didn't link anything. I used the "at" symbol to reply to each person individually, though.

So our businesses would be similar. I read the description in his USPTO trademark record. If he actually does anything, he operates as a representative or agent for certain companies. I would work online exclusively, and be more or a referrer, earning affiliate commissions for referring people to these companies.

If he is "Health Coach". Somebody else trademarked "The Health Coach" too. I would think that is similar enough to defend against (just adding "the"), which seemed another evidence of abandonment (to an untrained observer). The holder of that subsequent trademark does the same thing that his record says he does, and she has a website to prove it.

So if there's no way to prove it's abandoned, it does seem like a risky proposition to start a new business with the possibility of a trademark dispute. So then, if "The" changes a name enough to allow it to be trademarked, what if I used "Health Coach Online"?

Or if somebody else used "EZ Health", would it be safe to use "Health EZ4U"?

(I understand word order doesn't matter, and I agree to consult an attorney before making any decisions. Just trying to get a feel for this issue.)

Thanks.

 

[quincy]

No I didn't link anything. I used the "at" symbol to reply to each person individually, though.

So our businesses would be similar. I read the description in his USPTO trademark record. If he actually does anything, he operates as a representative or agent for certain companies. I would work online exclusively, and be more or a referrer, earning affiliate commissions for referring people to these companies.

If he is "Health Coach". Somebody else trademarked "The Health Coach" too. I would think that is similar enough to defend against (just adding "the"), which seemed another evidence of abandonment (to an untrained observer). The holder of that subsequent trademark does the same thing that his record says he does, and she has a website to prove it.

So if there's no way to prove it's abandoned, it does seem like a risky proposition to start a new business with the possibility of a trademark dispute. So then, if "The" changes a name enough to allow it to be trademarked, what if I used "Health Coach Online"?

Or if somebody else used "EZ Health", would it be safe to use "Health EZ4U"?

(I understand word order doesn't matter, and I agree to consult an attorney before making any decisions. Just trying to get a feel for this issue.)

Thanks.

The addition of generic words before or after a trademark do not make the second trademark any less infringing. I cannot add words to Coke or Google and have my use not attract the attention of Coke or Google attorneys.

This is not to say that you cannot use generic words in the way the words are meant to be used. You can use "health" and "coach" to describe what your business does. Example: Business X provides health coaching or business X provides coaches to help you manage your health. But the "X" name of the business should not be "Health Coach" or "The Health Coach" if "Health Coach" is someone else's trademark. You run a very real risk of confusing consumers with the use and you therefore risk being sued by the Health Coach trademark holder if you use their mark to identify your similar business.

As I said earlier, it is possible for two companies to share a name without issue - but this is when the companies have different goods/services and different markets or operate strictly in one geographic area and these areas do not overlap.

Here is a link to the USPTO where you can access the trademark examiner's manual to see how trademarks are judged: https://www.uspto.gov/trademark/guides-and-manuals/manuals-guides-official-gazette

I think you are smart to seek a personal review by a trademark attorney in your area and/or seriously consider choosing a name that is unique to you and your business.

Good luck.

 

[noviceguy]

Thanks for the help.

 

[quincy]

Thanks for the help.

You're welcome, noviceguy. Thanks for the thanks.

Good luck with your business, however you decide to identify it.

 

[noviceguy]

Is it okay to come back and ask something further now? I looked in another direction.

I found a domain name that is expiring next month. The name is brandable as a company name. There is no trademark filing on record with USPTO. However, there seems to be a business using this name in another state (not the owner of the website). I found articles of incorporation online from last year but cannot find the actual business on Google.

So, if they don't own the website, and haven't filed a trademark with USPTO, would I probably be in safe territory to grab the domain name (if possible) and file for trademark with intent to use within 6 months? Or would I be facing another trademark battle/problem?

I understand trademark is not necessarily dependent on the USPTO filing. But there is a difference between a business name and a trademarked name, right?

Thanks for any insight.

Added: I used the address in articles of incorporation and found the company, but it is using a completely different name. And their google profile links to their website under that different name too.

 

[quincy]

Is it okay to come back and ask something further now? I looked in another direction.

I found a domain name that is expiring next month. The name is brandable as a company name. There is no trademark filing on record with USPTO. However, there seems to be a business using this name in another state (not the owner of the website). I found articles of incorporation online from last year but cannot find the actual business on Google.

So, if they don't own the website, and haven't filed a trademark with USPTO, would I probably be in safe territory to grab the domain name (if possible) and file for trademark with intent to use within 6 months? Or would I be facing another trademark battle/problem?

First, there is a chance that the domain name registrant will renew the domain name you want.

And trademarks do not have to be registered with the USPTO so a USPTO database search will never be enough to ensure that the name you want to use is not already being used as an identifier for a company's goods or services. A wider search is recommended.

I understand trademark is not necessarily dependent on the USPTO filing. But there is a difference between a business name and a trademarked name, right?

A business name is a trademark. It identifies the business, distinguishing it from others. If the name is state but not federally registered, there could be a geographic limit to its protection under trademark law, however.

Thanks for any insight.

You're welcome.

Added: I used the address in articles of incorporation and found the company, but it is using a completely different name. And their google profile links to their website under that different name too.

A business can use more than one name/trademark to identify itself and its assorted goods/services. An example: Ford Motor Company and its vehicle lines (Lincoln, F-150, Mustang, etc.), insignias (e.g., GTXI), diagnostics services, clothing wear ... and a continuing wide range of other products and services each with their own trademarks all under the Ford umbrella.

So specifics really matter.

I admire your research and the wisdom of your approach in coming up with a name for your business. Many people start a new business without considering the legalities. I think what you will need to do at some point, though, is to sit down with a legal professional in your area for a personal review of the specific trademark choice(s).

Once you are satisfied with your research and you choose a name to identify your business, and you have firm plans to start using the name in commerce within 6 months (extensions possible), you can file an intent-to-use application with the USPTO to reserve your trademark.

 

[noviceguy]

Got it.

As far as research, it's crazy if people don't do this ahead of time. There's so much to think of these days when starting a business. Everything is so interwoven. Is the domain available? Is the name trademarked/in use? Is it available on social media, and is it under 15 letters? (Otherwise it will have to be abridged on twitter and youtube, which messes up branding).

It would be a shame to spend time and money getting started, only to soon realize you missed some very important steps.

So my last question then: is there a way for me to find out if a name is registered only at the state level but not the federal level?

 

[quincy]

Got it.

As far as research, it's crazy if people don't do this ahead of time. There's so much to think of these days when starting a business. Everything is so interwoven. Is the domain available? Is the name trademarked/in use? Is it available on social media, and is it under 15 letters? (Otherwise it will have to be abridged on twitter and youtube, which messes up branding).

It would be a shame to spend time and money getting started, only to soon realize you missed some very important steps.

So my last question then: is there a way for me to find out if a name is registered only at the state level but not the federal level?

You can find this information through the Secretary of State.