Is owning a domain a vaild reason to oppose a TM application?

[south]

Thoughts?

I picked up a name from tdnam in May. I just went PM it to someone as a possible name for their request. So, not being a generic keyword, I went to check on possible TMs. Turns out someone filed for a TM on the word 6 days after I got the name. The "Published for Opposition" date is October 23, 2012. Not sure why that is a future date, will have to research to understand this weekend. But basically I'm wondering if anyone has used domain ownership as a valid reason for opposition to a TM application.

Thanks!

 

[Theo]

Trademark use does not necessitate trademark registration. In other words: I can use the trademark "widgets" for years, before I apply for a registration. Timing of the application might be a coincidence, or it might be intentional. Opposition is the period during which anyone with legitimate interest might oppose the registration of the mark. To oppose it, you would have to have equal use, e.g. a trademark (registered or not) which would be harmed if that other application were granted. Mere ownership of a domain does not provide an ample reason - in my opinion - to oppose a mark that matches the domain fully or partially. You can PM me the name and I can take a look, or you can talk to an IP attorney, if you invested a lot of money in the domain.

 

[south]

Thanks Theo. No, didn't invest a lot, but would like to get a lot

Sending a pm

 

[katherine]

Just sitting on a name doesn't accrue any rights, development does. TM rights are gained through usage

Ianal of course.

 

[Gerry]

Perhaps see on the opposition form if there is just a place to make a notation (vs. opposition) alerting the USPTO that the domain name is in your hands.

 

[south]

Perhaps see on the opposition form if there is just a place to make a notation (vs. opposition) alerting the USPTO that the domain name is in your hands.

Perhaps. Don't think it's that simple though. I'm so short of time, I'm just gonna have to wait on this & see if they make an offer.

Thanks to all!
Scott

 

[Gerry]

See this thread:

http://www.dnforum.com/f77/what-do-...lexandra-uspto-have-common-thread-495074.html

I think it is a good option.