How strong is this TM application?

[DomeBase]

In terms of the implications for owning a domain that may have overlapping characters, I would greatly appreciate feeback on how strong the following trademark application is -- with the following general characteristics --

(1) "pending", but a "suspension letter" has been mailed
(2) it is for characters "(and Design)" and standard character claim is "no"

Your comments, particularly from those with expertese or experience in these areas, is appreciated. Thanks.

---------- from USPTO with identifying info blanked out ----------

###### (and Design)

Status PENDING - Suspension letter mailed
Status Date ####### ##, ####
RegisterPrincipal

Serial No.##-######

Filed ####### ##, ####
Filing BasisSection 1(b) - Intent-to-Use

:
:

Design Codes ###### - #########
###### - ##### #### ####
:
:

Standard Character claim: No

Current Status: An office action suspending further action on the application has been mailed.

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

####-##-## - Letter of suspension mailed

####-##-## - Suspension Letter Written

 

[Domagon]

That doesn't give one much to go on ...

I tried searching on, what I believe, your name / address, but only found some old TM filings ...

Trademarks is an arcane area of law - at this point, you'd do likely do best to hire a TM attorney to assist with the filing.

If you want to go it alone to save money, time, hassle, etc ... then consider amending the application to registration on the Supplemental Register - much lower standard, but likely better than getting nothing - and it opens the door for registration on the Principal Register in the future.

Ron

 

[DomeBase]

That doesn't give one much to go on ...

I tried searching on, what I believe, your name / address, but only found some old TM filings ...

Trademarks is an arcane area of law - at this point, you'd do likely do best to hire a TM attorney to assist with the filing.

If you want to go it alone to save money, time, hassle, etc ... then consider amending the application to registration on the Supplemental Register - much lower standard, but likely better than getting nothing - and it opens the door for registration on the Principal Register in the future.

Ron

Thanks Ron. I appreciate your time. To clarify, in this situation, I already have a couple domains with the character string. I have become aware of the above trademark application and am wondering to what extent I should be concerned about a "suspended" application without a "standard character claim."

 

[Domagon]

Difficult to say ... heck, there could be an unregistered common law trademark(s) in use out there somewhere that is a potential threat.

TM databases are not akin to Whois databases - more than one entity can have the same mark, etc, not registered at all but still legally a mark, registered long after first use, etc.

In regards to domain names - owning a domain name does NOT automatically grant one rights to a mark for the string that comprises the domain.

If anything, the reverse is more likely ... in that respect, your concern is quite valid ... in regards to the application that's "suspended", that's probably nothing to worry much about right now, but certainly keep an eye on the registration (even one that's "dead" can be revived / applied for again), and just as importantly, research the person / entity that filed that application ... did they file others that are a potential threat to you ... what does their motivations appear to be, etc.

One of the easiest things to do is develop the domains, if you haven't already, in a distinctive way that's unique ... potentially allowing you to make a legitimate claim of having a common law mark(s).

Conversely, if the domains you have were registered with the intention for resale / future use, put nothing on the domains beyond a welcome page; make them placeholders of sorts - for some types of domains, in particular generics / acronyms, this may the better route to take.

Consulting with an experienced trademark attorney may be worthwhile if still concerned; there rarely are any quick, simple answers when it comes to trademarks and related matters.

Ron

 

[DomeBase]

Thanks again Ron. I have developed the domains with genuine, original content. Some even have Google Page ranks of 3. I have a good attorney on retainer, but have never received an UDRP and thought I would see if I could get some initial comments from folks here instead of $325 (or thereabouts) per hour In that respect, many thanks. I try to contribute to the forum in some ways (like the drop lists) so that I give as well as take. Actually -- on a personal note -- if you would like a logo or two for some of your sites, I can offer you some designs for free (variations on the couple hundred that I have already made).

I will definately keep an eye on the progress of their trademark application. There are a couple reasons why it might not be approved. If it is approved and I hear from them, then I will consult with my attorney and also my gut feeling about what is the ethical thing to do.

Additional comments also appreciated -- especially about whether it makes a difference with respect to a potential UDRP whether the mark is for a standard character claim or not (e.g. for a design).