Need advice, please read...

[DNEX]

Hi all,
I hope you can help with an issue, and suggest how to proceed.

Many years ago I believe that I coined a word (note: a Google search for this word turns up only 200 hits, most pertaining to my site, and the rest are misspellings). In 2001, I registered that word in most tlds. Until last summer, to my knowledge, no trademark ever existed for that word, and then all of a sudden it popped up on USPTO as a registration (under a 1b "intent to use") status, in the classes for which it arguably best fits. The registrant is a major U.S. company, and one could speculate what they want to use it for. Let's just say it is huge.

I did not fight their application, could not. I have a site up, which currently is non-commercial. They have recently been granted a Notice of Allowance.

I have exchanged a couple of minor emails with their trademark attorney (a separate firm), asking if they would be interested in partnering. But, I have never offered the site or names for sale. They haven't expressed much interest, but my hunch is that they need to domain names to have a product/service for their trademark.

Questions:
1. If the domain names were for sale, what would be the best way for me to approach them?
2. What are the chances that they could take my domain names in a UDRP dispute, despite my having registered the names six years prior to their application?

Thanks for you help!!!

 

[Theo]

Even if you didn't approach them to sell it, you did initiate contact by offering partnership. The last thing a tm holder wants, is to give the impression that their marked is to be shared among different corporations and individuals. Currently, their tm application is under the "intend to use" umbrella, which means that they have 6 months (sans any extensions) to actively use the mark in interstate commerce. After they establish that, most likely the mark will be granted registration. At that point, they might become aggressive. If they seem passive and uninterested right now, it might be due to the above. However, if they were to file a UDRP there is no warranty that they would get the domain solely based on the tm. They'd have to prove use of the domain in bad faith - which can be avoided by your continuous use of the domain for functions different than their intended use.

If you are valuing the domain as one of your important assets, consider consulting with an IP attorney. He will be able to determine what your best options are.

 

[DNQuest.com]

TMs are granted to protect consumers in the commercial market. Since you had not commercialize the word, you won't be afforded any protection. Know if you actively used in a commercial environment, that is a different story. Unfortunately, ideas are stolen all the time, it's the ones who make the effort that benefit. As an example, most of us heard the word threepeat (at least those who follow sports). It is thrown around all the time. what people don't know is the word is a registered mark owned by Pat Riley which he coined during the MJ Bulls years. So every shirt or item with threepeat, Pat gets a cut. As a side note, he also registered "fourward".

 

[DNEX]

Any advice? From the two responses thus far, it sounds like I'm dead in the water. Did I really exhibit "bad faith" by emailing a lawyer for a company that had just applied for a TM under Section 1b, a full 6 years AFTER I first registered the domain name?

 

[jberryhill]

DNEX, clearly one cannot register a domain name in bad faith when there is no existing trademark.

http://domains.adrforum.com/domains/decisions/1142379.htm

Just as clearly, a lot of attorneys are idiots, and will happily cause you problems for soliciting to sell a domain name based on the fact that they filed a trademark registration application.

Whether or not a claim has merit has nothing to do with whether or not defending against can be a time consuming and expensive hassle.