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Dead Trademark and Domain Name Transfer

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lovehealthsucce

Junior Member
CO

Greetings. :)

We are going to be starting a small online community.

There was a Trademark on the name we chose...but it was listed as "Dead" in the Trademark search...and has been so for 6 years.

We applied for the Trademark of the name yesterday.

We registered the domain using the ".net" format....but, the company that used to hold the Trademark still owns the ".com" format and forwards hits to it to their main corporate site, which is still active.

My assumption is....that the company at one time 6 years ago considered using the Trademarked name as their company name...and then changed course.

The company that formerly owned the Trademark (and still owns the ".com" name) is in the business of reselling mobile phone, cable TV, and satellite radio subscriptions....but does not offer internet telephony (VOIP) at this time.

My company will offer an ancillary VOIP service to our community members....but has no business that competes directly with the other company.

Three questions.

Is there any reason our Trademark would be turned down just because of any of the facts above?

Is there any way for the other company to "revive" a Dead Trademark after we have now applied for a new one?

What is the best way to approach the other company to inquire about "buying" or "transferring for free" the ".com" domain to us? How do we do it in a way so that current owner of the ".com" domain doesn't mistakenly infer that we are "the next big thing" on the internet...resulting in them jacking up the price for the transfer?


CHEERS!

D
 


divgradcurl

Senior Member
Here's the problem you are likely to have -- even though the registered trademark is "dead," that doesn't mean that the original party doesn't still have rights to the trademark. If the original party is still using the mark, they could still assert common-law trademark rights. So just because a registered trademark is "dead" doesn't necessarily mean that its fair game to use -- it might be, but there might also be someone out there claiming common-law rights to the mark.

Second, if the other party is still using the mark, you might have trouble because you are essentially in the same line of business. You state that

The company that formerly owned the Trademark (and still owns the ".com" name) is in the business of reselling mobile phone, cable TV, and satellite radio subscriptions....but does not offer internet telephony (VOIP) at this time.

My company will offer an ancillary VOIP service to our community members....but has no business that competes directly with the other company.
Although technically mobile phones, satellites and VOIP are quite different, from a commerce perspective, they are a lot closer than you think, and would probably be considered essentially the same lines of business for purposes of an infringement analysis. The test for infringement is "likelihood of confusion," not "exactly the same," so if a VOIP or mobile phone customer would be likely to be "confused" over which company he was dealing with, that could be enough under an infringement analysis to find infringement -- and that might make it difficult to get the mark registered.

What is the best way to approach the other company to inquire about "buying" or "transferring for free" the ".com" domain to us? How do we do it in a way so that current owner of the ".com" domain doesn't mistakenly infer that we are "the next big thing" on the internet...resulting in them jacking up the price for the transfer?
Tough question. If they are still using the .com address, they may still be using the trademark for the purposes of asserting a common-law trademark, and may be in no mood to give up the name -- and you won't be able to make them give it up, even if you eventually do get a registered mark, because they have a valid preexisting use.

As far as how to negotiate, who knows? It will probably depend on what exactly they are using the old mark for.
 

lovehealthsucce

Junior Member
divgradcurl...

....thank you so much for the thorough and instructive reply. I've got a few follow-ups..

  • If I am awarded the Trademark, can the other company that holds the now "Dead Trademark" still renew it even after it is awarded to me? If so....would we both have equal rights to it? How would that work?

  • If I am turned down for the trademark specifically because of the VOIP element in my use (we applied for 12 classes...that is the only one that even remotely pertains to communication or to anything the other company does or offers)....would I get to resubmit without the VOIP class under the same application, or must I start the process (and pay) again?

  • Because of the VOIP element...will the Trademark application review person be compelled to contact the other company to discuss my application with them? Does any part of normal procedure involve the contacting of the other company (because of their rights to the "Dead Trademark") by the Trademark office?
 

FlyingRon

Senior Member
If they are still using the mark, the fact that they didn't renew the registration, doesn't mean you are free to use it. Yes they can reregister it. As long as they are still using it in commerce they can try to stop you from using it.

As for the domain, as long as they have trademarks or a company name existant, and continue to renew it, there's nothing you're going to do to get that domain. Further, if they are using the mark and/or have the company name they can wrestle the .net domain away from you for your squatting on it in bad faith.

You need to find out if they are using the mark or intend to use it.
 

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