A domain name and a company - what to do?

[alwaysthinking]

So lets say I have a very generic domain name like coolstuff.com that was registered 10 years back. And I live in NY.
Lets say I want to start an online store selling cool stuff like gadgets and what not.

Now lets say i wanted to trade mark this domain name cause I noticed there is cool stuff corp. in NY also and I dont want them to sue me later on.
I do some search on USPTO site and find that they already have a trade mark on "cool stuff" with these details:

Toys- balls, namely; small high bouncing hand balls and small hand soft squeeze balls, toy cars, toy action figures, water pistols, board games, dolls, yo-yos, etc. FIRST USE IN COMMERCE: 19971100

Am I screwed here. Should I not even think of filing a TM cause there is one that already exists?
How would I protect my domain in this case?
One more thing, even though domain was registered in 2000, I just recently bought it.

[CyberLawyer]

Actualy I'm not sure i spelled domino's correctly but you get the point. Trademark law allows more than one person to have the same mark within the same geographic region so long as the prior mark is not famous (whatever that means) and so long as there's no likelihood of confusion. No likelihood of confusion generally exists when the products or services are distinctly different. Like Dominos pizza and Dominos sugar. They both have valid trademarks.

When a mark is very disctinctive and famous (like Nike), you can't use it on anything else. This may not be infringement but is something called dilution.

With all pf that said, trademark litigation occurs often becuse these standards leave room for argument, thus litigation.

This is not legal advice.

[tldrental]

Funny you should use the example "cool stuff" because I used to work for a ecommerce company and we had a customer "Cool Stuff 4 U" they do exactly what you are talking about. They also made a large amount of $$$ monthly.

I forget what there domain name is, but the ecommerce system url is http://coolstuff4u.zoovy.com/

I worked for this company 3 years and they were a customer before I started. My employment ended last Nov 07 and they are still in business.

I managed all the cease and desist letters for our customer base and to my knowledge no one ever bothered Cool Stuff 4 U, in fact who knows maybe that is there old domain name. I know we had a few customers that lost there domain names because they never paid the renewal thinking Zoovy would for them......lol idiots!

[DNQuest.com]

Cyberlawyer, are you actually a lawyer? If you are, I hope you realize there is a certain decorum when it comes to message boards and posting if in fact you are a lawyer? Maybe you should contact some of the active lawyer here to see how you should conduct yourself in case you did not realize it.

[CyberLawyer]

Originally Posted by DNQuest.com

I hope you realize there is a certain decorum when it comes to message boards and posting if in fact you are a lawyer? Maybe you should contact some of the active lawyer here to see how you should conduct yourself in case you did not realize it.

Hmmmm, a "certain decorum"? I am a lawyer and I've been posting on forums since 1995 when I began buying and selling domain names and till now I've never been criticised for my "decorum." I read the rules here and didn't see any special rules for lawyers or opinions that belong to lawyers.

So I'm really wondering what the concerns are that you seem to have.

Thanks for the warm DNForum welcome. I'm glad you found my post helpful.

[meganerd]

Originally Posted by CyberLawyer

I read the rules here and didn't see any special rules for lawyers or opinions that belong to lawyers.

All lawyers at DNForum must submit the following when joining:

• Copy of a valid drivers license
• Current blood sample
• Current urine sample
• Pass a drug test
• Pass a lie detector test
• Provide a copy of current bar license
• Show documentation on at least 5 successful domain cases
• Realize that this list is a joke
• Paypal meganerd $500

Welcome!

[CyberLawyer]

Originally Posted by meganerd

All lawyers at DNForum must submit the following when joining:

• Current blood sample
• Current urine sample

Do those have to be taken from me?

[Dave Zan]

Originally Posted by CyberLawyer

Do those have to be taken from me?

And shipped at your expense.

[tldrental]

This thread is laugh out load funny, I fell out of my seat!!!

[onlinetv]

Trademark 1997 Domain 2002? Parked I assume? Never do anything with it in his area of that trademark. Why tease a legit holder? You are after the fact and now you must bite the bullet. Coolstuff, or similar can be electronics, audio, motorcycles and accessories, Gadgets other than those catagories under trademark. Cool stuff can be highly profitable online womans make up etc. Coolstuff can be air conditioners, fans and ventilation. Stay out of trouble.

Coolstuff is highly generic and it is wild they got that, might be a design trademark? Primary or secondary register?

Law is mostly arms length. What does it look like? Don't look like them.

Law is a fiction. You make it up as you go along and it does not have to be reality based.

I am new here too. The rules are very abundant and take time to digest. Are there rule sections for lawyers? Do we make them where those white powdery horse hair wigs??

[alwaysthinking]

Did some more research. TM is still live but the company that had it sure looks dead.

[jberryhill]

Hmmmm, a "certain decorum"?

Beats me what he's talking about. My "forum fee" is the right to be sarcastic and use foul language.

That said, my personal "sense" on lawyers participating on internet forums is that they should:

1. Use their real names,

2. Not comment on matters in which they are engaged without stating that fact,

3. Not purport to be advising a client,

4. Not solicit engagements or engage in other Rule 7 violations,

...but that's just me.

Also in general, I don't receive or respond to PM's on forums, since I do not know who else has access to those messages.

Are there rule sections for lawyers?

The relevant ethics code of their jurisdiction. A number of bar disciplinary boards have in the past commented on the potential conflict between the aspirational admonition to participate in public activities to advance knowledge of the law, and things like "radio call in programs" in which a lawyer may discuss various legal issues at the prompting of someone who calls in with a question.

Internet forums are similar to the classic "radio call in program" scenario that has been the subject of such disciplinary board opinions - and there can be a fine line between answering questions "about" the law and answering specific legal questions. Also, whether that line is crossed can depend on the question.

For example, person asks:

"My neighbor is a jerk and I don't like him. I'm thinking of shooting him to death. If he's a really big jerk, is that okay?"

Now, if a lawyer says, "That would be murder, and you shouldn't do that" then has that lawyer provided legal advice to that person, or have they answered a general legal question - i.e. without valid legal justification, intentional homicide will generally be some form of murder.

Personally, I think it would be acceptable for the lawyer to opine on that person's proposed course of action.

In other situations, the questioner's situation may be one in which there is no dead-simple answer - i.e. killing your neighbor is murder - or in which for other reasons the questioner should not be "drawn out" into potentially damaging casual statements.

However, a lawyer cannot - cannot - cannot - provide you with legal advice on an internet message board, since doing so would be an immediate ethics violation and malpractice (for the reason that the lawyer has, upon rendering the advice, violated the duty to maintain your inquiry and the advice in confidence).

[Acro]

Originally Posted by meganerd

All lawyers at DNForum must submit the following when joining:

• Copy of a valid drivers license
• Current blood sample
• Current urine sample
• Pass a drug test
• Pass a lie detector test
• Provide a copy of current bar license
• Show documentation on at least 5 successful domain cases
• Realize that this list is a joke
• Paypal meganerd $500

Welcome!

Thanks for the idea! I will turn my Decorum.org into a lawyers' verification system