Trademark holder cancels record with disclaimer & files new w/o disclaimer

[Area52]

I hold two-word domain names (with and w/o hyphens) of which a trademark (Type 3. Design plus words, letters or numbers) had existed by others for a number years, with a disclaimer in the filing stating that "No claim is made to the exclusive right to use xxx xxxx apart from the mark as shown". That trademark owner has an active retail site under the same name with the com ext. Recently, that record has been canceled and a new trademark filed (Type 4. Standard character mark) for the same two words, without the disclaimer. Goods and services described include the two word subject.

I'm suprised that they could obtain exclusive use of the two words. The trademarked words are what I would call generic, at least for the industry that it describes. Virtually every company that sells this product uses those two words to describe the item(s) that they offer and there is no other obvious way to use the phrase. As an example only, this would be similar to having exclusive right to use the words "steel pipe" or "silk curtains".

How will this affect me, especially if I want to develop some of these names? Can I oppose the claim to exclusive use, outside of a lawsuit. All of the names I hold were registered prior to the latest filing.

For reference, here's the link to a thread where I posed a question about "no claim made to exclusive right to use" disclaimers in trademark records. http://www.dnforum.com/f26/trademark-disclaimer-no-claim-made-exclusive-right-use-thread-306282.html

 

[EnricoSchaefer]

There is so much variability in how examining attorneys treat these trademark registrations it is not even funny. Some trademark attorneys file marks, see whether the first office action notes problems and , if so, withdraws the mark. They then seek registraiton on a different trademark application knowing they will draw a different examining attorney who might treat the problematic issue in their favor. Many domainers complain about WIPO & NAF when they really ought be *****ing at the USPTO. Then again, many countries have no examination process!

Here are some "no claim is made to the exclusive right" UDRP transfer denials from NAF and WIPO returned through domainfight.net.

__________________
Enrico Schaefer, Attorney
Domain Name Trademark Attorney
enrico [@] traverselegal.com