domain name and abandoned TM

[stevesko]

Hi,

I am looking at buying a domain name XX.com .

The product name that I will be promoting as an affiliate is XX, the domain name that I am looking at buying is XX.com, the company that makes XX owns XX.net.

The company claims to have a registered trademark (in their google ads) but when I checked it was abandoned.

Does the fact that they abandoned their TM application take away their "right" to claim a TM and get the name in a domain name dispute?

Steve

 

[DNQuest.com]

No, all it means (if what you say is true) is they lost the government registration of their mark. They still may have a common law TM. Additionally, you need to check the TOS of the affiliate to see if you can have a domain with thier TM in it. BTW- if you did not realize, you are unwittingly admitting to thier TM. You know the company, you know the procudt they make, you want the domain with thier product name in it and you want to be an affilliate. If they can be successful is another story.

 

[jberryhill]

Ditto - go read the affiliate agreement, and tell us what you find in there which may be relevant to your question.

 

[stevesko]

Just found this in the sedo newsletter..

"Under traditional US trademark principles, once a trademark is deemed to have been abandoned, the Plaintiff could not claim that its rights were infringed because they no longer had trademark rights."

uspto.gov says their mark is abandoned. So, according to the way I read this, the affiliate terms for trademark do not apply.... But I'm no phily lawyer.

Steve

 

[DNQuest.com]

I will let John handle that one as far as legal details. But the Sedo newsletter may be misleading (BTW- Sedo newsletter may not be the best source of legal advice). In regards to domains, if someone can prove they have rights to a name and you don't, they are 2/3 the way to a successfull challenge.

 

[stevesko]

"BTW- Sedo newsletter may not be the best source of legal advice)."

agreed... hence the discussion. I wanted some opinions on the subject.

Steve

 

[jberryhill]

"Under traditional US trademark principles, once a trademark is deemed to have been abandoned, the Plaintiff could not claim that its rights were infringed because they no longer had trademark rights."

uspto.gov says their mark is abandoned. So, according to the way I read this, the affiliate terms for trademark do not apply.... But I'm no phily lawyer.

Didn't I give you a reading assignment already?

You are confusing two different things.

Yes, once a trademark is deemed abandoned, it cannot be enforced by the former owner.

The USPTO database is not going to tell you if a trademark has been abandoned. It will tell you if a registration was not renewed. It will tell you if an application to register a trademark was abandoned. But it will not tell you if a trademark - the underlying trademark per se - has been abandoned.

You seem immune to the more important point here. You say that you want to enter into an affiliate agreement with these people. If the affiliate agreement says "foo is our trademark and you can't use it in a domain name", then none of this other stuff matters - the agreement controls.

 

[Theo]

So my question is, what action terminates a trademark (not its registration). Lack of use over a certain period of time? A legal document? The tm becoming a commonly used word or phrase ? (as in the xerox case).

 

[jberryhill]

Any number of events may terminate a trademark right. Three consecutive years on non-use will raise a presumption of abandonment.

What we have here, though is an abandoned application - i.e. there never was a registered trademark based on whatever it is the OP is looking at. My first inclination would be to take a look at the last office action to which no response was filed. But I doubt this discussion is going to advance very far at this pace. You'll never see "abandoned trademark" as a status at the USPTO. A registration might be "cancelled" for non-renewal, but the USPTO status codes only use the word "abandoned" in connection with applications. So it may very well be that the proposed mark was never registrable in the first instance, and it could be for a reason that would undercut any claim of common law right.

But, again, since the OP seems to want to join an affiliate program using the alleged mark...

It is unfortunate that SEDO would send out a vague and readily misinterpreted statement like that in their newsletter.

 

[stevesko]

Thanks for all your input, I have terminated negotiations on that domain name... clearly a TM violation - thanks for saving me a big headache.

Steve