Abandoned TM?

[twenty-three]

Hi,

I regged a XXXXXXXX.com which is a generic keyword. Now I found out that a company named "KEYWORD Inc." owned and used this domain in the past.

I pulled up a TESS search and it says the TM is abandoned.

Excerpt from TESS:

Goods and Services (ABANDONED)
Live/Dead Indicator DEAD
Abandonment Date $Month $Day, 2003


My question is, can I get into trouble with this domain? Not sure about the abandoned status. Thank you!

23

[draggar]

I am not a lawyer but dead means it is not active so no one has that TM anymore.

[victornumber]

you shouldn't get sued for it. plus like you said, it is a generic.

[twenty-three]

Thanks for your replies. I just wasn't sure about this situation...

The word in question is a process like "upload", how can this word be registered as a TM?

23

[Banned: theinvestor]

I have a little experience with this... even if the TM is abandoned and the company still operates and you use the generic term to infringe on their mark. Well they can still come after you.

The only good thing is if this is a completely generic term you should be okay....just remember if this was the same case and the term is not generic you can still infringe without it being a TM. Having use of a name is a big thing.

[mmerlin]

IANAL, but I've seen dictionary word TM's get through if the application is specific enough, or the TM application reviewer (the person working at the TM office) is lax or doesn't care or doesn't have a clue.

One thing to consider is take a look if the TM was for a specific logo using the generic word, that's another way to get a TM throgh (make it more restrictive in a sense)

[twenty-three]

I have a little experience with this... even if the TM is abandoned and the company still operates and you use the generic term to infringe on their mark. Well they can still come after you.

Is there any way (like an official register) to find out if the company is still active? I can't find no information about this company except some 2003ish references...

One thing to consider is take a look if the TM was for a specific logo using the generic word, that's another way to get a TM throgh (make it more restrictive in a sense)

There are 2 things listed under "Goods and Services" (with Abandoned in front) and includes "Mark Drawing Code: (1) TYPED DRAWING".


23

[Banned: theinvestor]

I would google it...but if it is generic it may be a little hard to find. At that point you want to see if it says anything extra about the mark where it would be easier to narrow it down.

I'm starting to think in this case you have nothing to worry about just because if you can't find any reference since 2003 and that's when it was abandoned it is safe to say it isn't operating anymore.

[twenty-three]

I couldn't find any current informations about this company, so I think it is not active any more.

Thank you all for your help!


23

[David G]

Based on my experience it likely says abandoned because the TM office did not receive a reply to an office action so the application was marked abandoned. It does not mean they are out of business, or they had a tradenark and it was lost, it almsot always simply means the TM application was abandoned.

[Cartoonz]

Based on my experience it likely says abandoned because the TM office did not receive a reply to an office action so the application was marked abandoned. It does not mean they are out of business, or they had a tradenark and it was lost, it almsot always simply means the TM application was abandoned.

It also means the TM is DEAD.

[dominator]

you have generic TMs like "apple"
though usually not for what it means (fruit)

(they actually paid millions of dollars to the beatles to use this name)

[marcorandazza]

There is no such thing as a "generic word." There can be generic uses of a word, but stop thinking that there is such a thing as a "generic word."

Also, the fact that the trademark *registration* was abandoned does not necessarily mean that the trademark was abandoned. Naturally, this should be an indicator that it has, but the registration could be abandoned simply because they had a stupid trademark lawyer who didn't tell them that it was time to renew their registration.

Chances are, you're in the clear. But it isn't as cut and dry as you may think. Do some research into whether the trademark is still being used by the prior registrant. Look at the TDR report and see if it was expressly abandoned, or abandoned due to non compliance with the renewal requirements.

[charlescarreon]

A phrase that is "merely descriptive" is registrable if it has secondary meaning. For example, I procured the registration of "Hardcore.com" for my client, as you can see in the TESS database, because it has secondary meaning. My argument for secondary meaning was simple -- thousands of type-ins per month. Duh, they must know what they're looking for

A generic term, on the other hand, cannot be registered. Here's a shocker -- a Seattle Federal Judge ruled that "Windows" was generic in the Lindows case. Microsoft dealt with this using a brilliant legal maneuver that I won't explain here, and paid Lindows $20 Million to switch to "Linspire." A large part of the Judge's determination that Windows was generic was based on the USPTO's initial rejection of the registration application. However, after the settlement, the USPTO got its priorities in order, and approved the Windows trademark. (Which really was generic, and should never have been registered.)

The example of "Apple" being trademarked is of course, the perfect example of a trademark that is NOT descriptive of the product with which it is associated, because Apple Computer was NOT SELLING APPLES. If a pear-growing company tried to register "Pear" it would be rejected as merely descriptive.

[dominator]

There is no such thing as a "generic word." There can be generic uses of a word, but stop thinking that there is such a thing as a "generic word."

no need to stop thinking that

the generic use was meant
but logically of "dictionary words" (that can be translated in other languages) like "apple"

not of artificial words like "adidas" or "xerox"