NameSilo

Weird Trademark question..

Spaceship Spaceship
Watch

mad409

Always thinking outside the box!Top Member
Impact
3,848
A name has a trademark, just searched it and of course read the description of the mark and what it covered. Searched the name in .com and it redirects to another site/domain and a service totally different from which they were granted a trademark for. Same owner..

Although their mark is live it appears to me they have abandoned the mark by not either updating their business model, or filing for a new trademark for the product they're now providing.

Anyone else seen this before when searching marks? I'm going to go ahead and try to register the domain I'm wanting as I'm pretty sure they should have either amended the mark, if that wasn't possible file for a new trademark.
 
0
•••
The views expressed on this page by users and staff are their own, not those of NamePros.
And the trademark owner is the registrant of both domains?
(If not, possibly a domain dropped and someone picked it up to redirect for link equity.)
 
0
•••
and a service totally different from which they were granted a trademark for

Whether or not they have abandoned rights in the registration for the original service is unrelated to whether or not they have developed unregistered, common law rights in connection with the new service.
 
5
•••
Whether or not they have abandoned rights in the registration for the original service is unrelated to whether or not they have developed unregistered, common law rights in connection with the new service.

Let me clarify.

If they had a trademark for bestfishinghooksintheentireworld, the mark is for selling fishing hooks on the internet and they also own the domain in .com.

But lets say the above made up domain was available in another extension and I wanted to register it. I first checked the mark and when doing so I see their domain now directs to another service that's totally different from selling fishing hooks on the net. It now redirects to a new domain and service and their new business model is a service to see if you're using the correct fishing hooks, through an online tool and nothing about selling fishing hooks. They didn't amend their mark, or apply for a new trademark for the name.

So the question is when a trademark name is not amended, or a new application filed then it would appear to me the trademark can't be enforced for their original intent of the mark.

I'm not questioning the fact they may have common law right for the new service but questioning what happens when trademark owners have an active mark but abandon the usage of their mark for another type service without informing the trademark office.

I'm just thinking about purchasing a domain I see this with, wasn't going to but after digging around I don't see that there would be an issue doing so. I've never ran in to this before, that's why I asked..

This is a common used term in question and used within many domains and I've also seen some cctlds using the exact match as what I'm trying to purchase too..
 
Last edited:
0
•••
This may or may not help, but is based on my experience as a non lawyer TM holder. The information is worth exactly what you're paying for it.

A mark while not apparantly being used is still alive. If the mark is not certified as being in continual use within registration timelines it will ultimately be canceled by the TM office. The cancellation process is automatic if no action is taken by the registrant but the first renewal window is 5-6 years after the original registration with additional renewal periods after that. Renewals will keep a mark alive/valid indefinitely.

Once a mark has been in continual use for more than 5 years the owner of the TM has a presumptive legal right to exclusive use of the mark.

You may be correct in your assessment of their current use, but legally they have a strong position and they likely are accruing common law rights to their 'new' use.

Bottom line -- Is the domain worth the effort of challenging a TM holder?

This kind of dispute is ridiculously expensive if it gets to the lawyer stage.
 
1
•••
what happens when trademark owners have an active mark but abandon the usage of their mark for another type service without informing the trademark office.

I'm going to assume we are talking about the US, and these comments address US practice...

As to "what happens" as far as the registration is concerned, the comments above apply to US trademark registrations which require a statement of use and proof of use at periodic intervals. There is no requirement to inform the USPTO. You have to be careful about your assumption that they have, in fact, abandoned the mark. They may be using it on those goods/services elsewhere, or they may have temporarily stopped using the mark for one reason or another.

If we are talking about "what happens" if that registration is asserted in the UDRP, then there's something of a problem. One of the screw jobs of the UDRP is the lie that it "does not expand trademark rights". It certainly does expand trademark rights, because a UDRP panel will not question a registration that is still in force, even if there is reason to believe it has been abandoned.

On the subject of:

another service that's totally different

Whether it is "totally different" or not, is also grist for the factual mill.

But, yes, I've run into this situation a couple of times. The swash.com proceeding was one of those instances. Also, while not very well fleshed out in the decision, the fiesta.com proceeding involved a mark registered in various European countries for "tobacco products" which the Complainant had not actually used for tobacco products for a very long time (a decade or more). The Complainant then launched a new line of electronic cigarettes under the long-disused mark, and claimed rights back to 1973 for entirely different products.

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-0080

In situations where I see a UDRP complaint which merely asserts a trademark registration, and does not back that up with any actual use of the goods/services, then it is usually a red flag. The way that UDRP panels are inclined to deal with those kinds of situations is almost hidden in the decision:

"The Complainants, which bear the burden of proof, in turn, furnished no evidence that the FIESTA Marks were well known anywhere in the world, let alone in the United States (the Respondent’s home country) in 2008 when the Respondent acquired the disputed domain name. Moreover, the Complainants failed to provide evidence with regard to publicity of the FIESTA Marks and to the extent of their business activities in the United States. Finally, the Complainants did not provide any evidence that the Respondent targeted the Complainants or the FIESTA Marks at any time."

Unpacking that, rather than to dispute the validity of the mark based on non-use, panels are more inclined, in situations where it appears the mark was abandoned for its original purpose, to address under the "bad faith" element whether there was any reason for the respondent to know about the mark (i.e. since they don't actually sell products under the mark for the recited goods/services).
 
1
•••
@jberryhill Very informative and thanks for taking the time to respond with such detail.
 
0
•••
  • The sidebar remains visible by scrolling at a speed relative to the page’s height.
Back