Abandoned trademark free to register as a domain?

**CoolDot** · 12-07-2003, 04:01 PM

Hello,

I checked and checked, but it seems JC Penny's slogan "It's all inside" has been abandoned as a trademark. Seems they do not have an active trademark on their slogan...

Or could this possibly be a "famous name" which does not even necessarily have to be registered in order to be valid? Can a slogan be a "famous mark"?

If not, and if there actually is no valid trademark, does that mean that domains like

ItsAllInside.biz
ItsAllInside.info
ItIsAllInside.com (note the "it is instead of the its..." !)

and similar ones are free to use ? Would it be cybersquatting to register them and offer them to JCPenny?

To clarify things. I HAVE of course registered the above domains before I posted this thread here. But if the common legal opinion here is that I am cybersquatting with that approach then I'd either cancel my registrations again or would offer the domains to JC Penny for free.

But if there is no valid trademark for that slogan then I would offer the domain to JC Penny for sale.

Am I sailing a rough course here? And does the fact that there is only an ABANDONED domain listed change things?

Thank you for your answers!

Kind regards to all
CoolDot

**namedropper** · 12-07-2003, 06:19 PM

If there's no valid TM for the terms, that means they arent using them anymore so have no reason to buy the names from you.

If they are using the terms and would be interested in them even though the domain extensions are weak and the .com one doesn't have the contraction, chances are they have a TM on them, whether it's common law or registered, and you would be cybersquatting, especially because you just admitted that your purpose for buying them was to try to sell them to the presumed owner.

That's a no win situation.

Common rule is if you buy a term as a domain name thinking it's valuable because of the advertising and work put into it by another company, that's cybersquattting.

**jberryhill** · 12-07-2003, 06:37 PM

"I checked and checked, but it seems JC Penny's slogan "It's all inside" has been abandoned as a trademark. "

Oh, really.

You "checked and checked"?

Did you bother to check the upper left hand corner of their homepage at www.jcpenney.com ? Or, gosh, every honking page on their site?

Did you check the USPTO?

Word Mark IT'S ALL INSIDE

Goods and Services IC 035. US 100 101 102. G & S: Retail department store and mail order catalog services. FIRST USE: 20000910. FIRST USE IN COMMERCE: 20000910

Serial Number 76059784

Filing Date May 31, 2000

Published for Opposition February 6, 2001

Registration Number 2562445

Registration Date April 16, 2002

Owner (REGISTRANT) J. C. Penney Company, Inc. CORPORATION DELAWARE 6501 Legacy Drive Plano TEXAS 750243698

Register PRINCIPAL

Live/Dead Indicator LIVE

"...the common legal opinion here..."

You can get all sorts of things from a bulletin board. One thing you will not get is a legal opinion, nor should you seek one there.

**CoolDot** · 12-07-2003, 07:17 PM

Mr. Berryhill,

>Oh, really. You "checked and checked"?

No need for sarcasm. I spent about half an hour looking for the trademarks. I used
http://www.nameprotect.com/cgi-bin/F...rch/search.cgi
which returned the one abandoned trademark I mentioned in my post.

>Did you bother to check the upper left hand corner of their homepage at www.jcpenney.com ? Or, gosh, every honking page on their site?

Yes I did check. And what at first sight appears to be a tiny little TM next to the "It's all inside" is nothing but a colon. I've copied and enlarged that picture. Had I seen a TM or (r) there then I'd not registered the domains.

>Did you check the USPTO?
No I didn't know about this before. After reading your post I went to uspto.gov and found the trademark-search which then brought up the live trademark you found also.

>>...the common legal opinion here..."
English is not my first language, and I may have misexpressed that. I am aware that a forum is not a replacement for legal advice from a lawyer, but this forum is good at giving a direction (much like a compass) about where the legal truth will lie. And that's a "legal opinion" in the linguistic world I live in

)

So the situation is clear. There is obviously a live trademark. I will therefore contact JCPenny and offer the domains for free.
I hope they'll be ok with that and not pursue the matter any further.

Thank you for finding that live trademark. And for the future I know that the results on nameprotect can't be trusted and that checking on that uspto.gov site is the right way. Thank you for that information.

Kind regards
CoolDot

**CoolDot** · 12-07-2003, 07:19 PM

Namedropper,

>Common rule is if you buy a term as a domain name thinking it's valuable because of the advertising and work put into it by another company, that's cybersquattting.

Ok. Understood. Thanks!

**Domagon** · 12-07-2003, 08:52 PM

Originally posted by CoolDot ...So the situation is clear. There is obviously a live trademark...

Often it makes little difference whether a trademark is Live, Dead, Abandoned, Canceled, etc ... IF the trademark is still in use (or has in the past and may again be utilized again in the near future), it's often best to stay away from it.

On an aside, it doesn't even have to be exactly the same - changing a few letters, etc often doesn't matter in regards to infringement/dilution.

I will therefore contact JCPenny and offer the domains for free. I hope they'll be ok with that and not pursue the matter any further.

I personally would NOT recommend that. A better approach, in my opinion, is DELETE the domain (or if it expires soon, don't renew it). Even offering them the domain name for free could cause you trouble!

Thank you for finding that live trademark. And for the future I know that the results on nameprotect can't be trusted and that checking on that uspto.gov site is the right way. Thank you for that information.

Trademark law is very arcane and much of it goes against commonly held wisdoms. Persons who search the USPTO and related databases like a Whois do so at their peril...when unsure, it's best to consult with an attorney experienced in trademark law/searches for professional assistance.

Ron

**CoolDot** · 12-07-2003, 09:05 PM

Valuenames, thank you VERY much for the solid advice! I will then not approach JcPenny but simply delete the domains again.

I'll consider it money spent wisely on learning something important

)

Thank you for that practical advice!

Greetings
CoolDot

**jberryhill** · 12-07-2003, 11:22 PM

"No need for sarcasm. "

Oh, there's always a need for sarcasm.

Consider putting up with it to be my "fee" here.

If you really want sarcasm, try:

http://www.johnberryhill.com/nigeria/rogers.html

"Thank you for that information."

You are welcome.

**CoolDot** · 12-07-2003, 11:35 PM

"No need for sarcasm. "

Oh, there's always a need for sarcasm.

Consider putting up with it to be my "fee" here.

Ok

) In that case I pay it gladly

)

An honest "Thank you!" for your help!

CoolDot

**CoolDot** · 12-08-2003, 10:35 AM

I just cancelled the three domains. Some money lost but some wisdom gained

)

Thanks to all of you for your comments!

CoolDot

**Steen** · 12-08-2003, 11:14 PM

Why would you register these?

So you can sell them to JC later?!

IMO, thats unethical and cybersquatting

**actnow** · 12-09-2003, 07:50 AM

John, I love your notes to Nigeria. Plus, the passports.

I just kept laughing and laughing.

Please keep us posted.

Richard Bender

**DaddyHalbucks** · 12-09-2003, 06:01 PM

http://www.johnberryhill.com/nigeria/rogers.html
++++++++++

John,

That is truly hilarious!

**ReignDomain** · 12-09-2003, 06:31 PM

Originally posted by jberryhill

http://www.johnberryhill.com/nigeria/rogers.html

Great!

**RON2** · 12-09-2003, 06:46 PM

Originally posted by jberryhill

If you really want sarcasm, try:

http://www.johnberryhill.com/nigeria/rogers.html

John, a classic in the makings. I hope there's more to come! :-D

**CoolDot** · 12-09-2003, 07:12 PM

Steen,
>So you can sell them to JC later?! IMO, thats unethical and cybersquatting

Not if they actually did NOT have a valid trademark! If they merely had a slogan but had failed or missed to trademark it, then protecting their slogan by buying a domain might be a fair assumption. Nothing unethical in my thinking there, just the wrong premisse of thinking they did not have a trademark.

I like the nigerian-game

)) Make them send you genetic samples!

)