how to handle?

[seeker]

I have a situation, and would appreciate advice.

I have a domain that has 2 dictionary words in it.
the combination of these words *heavily* hint that this name is intended for general internet use.
(search, programming etc...)

now, I am curently negotiating its sale at sedo.

the negotiation is going well, however, I am asking for more, and we are discussing it.

as the negotiation has progressed, i searched uspto and found that the name has a trademark by a company that deals with personnel recruitment, and they are using the .net version. The .org is used for something diferent.

with a strestch of the imagination, the name itself could apply to the trademarked name, but by no means is it evident.
my problem-
should I accept the offer before it hits a point where a UDRP might be cheaper in the (maybe unlikely) event that it is the .net version that has the TM trying to buy it? Or do i stick to my guns to what i believe is a fair price?
I am know at the point where the buyer has requested a 'justify your price' comment.
I think it is very important for me to justify according to what I believe is the value,
a) it is a great name
b) very brandable
c) the words hint at eactly what I believe they hint at (actually clearly say), and nothing to do with the TM currently in place.

Yet, i wouldnt want my justification to be used against me in the unlikely event they do try to somehow claim it is a TM violation.

Thanks!

[jberryhill]

i searched uspto and found that the name has a trademark

There are lots of things in the USPTO database. Not all are trademarks.

the words hint at eactly what I believe they hint at (actually clearly say), and nothing to do with the TM currently in place.

Assuming there is a trademark relative to some category of goods or services, then whether there is a potential issue depends on what your prospective buyer wants to do with the domain name.

I recently encountered a situation, for example, where A was using a domain name for goods and services that did not conflict with B's TM. A sold the domain name to C, and then C started using the domain name for an infringing purpose. When B threatened C over the TM, then C tried to claim that A was responsible. So, whether or not your buyer is the TM owner here, the potential issue doesn't "go away" simply because the domain name was sold to someone else.

[seeker]

Thanks John, I didnt know that.
but generally speaking, if there is a tm in uspto for a service that and I own a domain that has that name, is listing it for sale at sedo automatically an infringement even if the name has a meaning and has nothing to do with the function (market) that the TM is being used for?

this helps, as it can make a difference in replying to the buyer.

Thanks again.

[jberryhill]

this helps, as it can make a difference in replying to the buyer.

I'm sure it would.

Generally speaking, generalities are not always useful in specific situations.

[Acro]

Unfortunately, deals initiated through an anonymous mechanism such as sedo - versus direct contacts - do not disclose valuable information that would have otherwise been available, if the other party had contacted you via other means. For example, those that contact me through my online form have their IP's exposed; even if a Hotmail account is used, I can see where they came from (e.g. from a corporate address that might be related to the domain they are interested in).

[chatcher]

...I am know at the point where the buyer has requested a 'justify your price' comment.
I think it is very important for me to justify according to what I believe is the value...

I don't.

Without making any comment about the potential trademark problem, I find the sedo "justify your price" option absolutely comical. In the first place, as the owner, you don't have to justify your price, or I should say your justification is "because I own it and that's what I want for it". The buyer has declined to accept your offer based on their own criteria, but now wants you to explain to them why their criteria are not adequate. That's like asking a car salesman to try a little harder to sell you a car.

Given the fact that there may be some kind of TM issue, I would definitely not use the sedo venue to make any kind of explanation of why the name is worth whatever you think it's worth. I would either ignore the justification request, or say something as simple as "Unwilling to sell for less".

[Acro]

At that point I simply cancel the negotiations. If they really want the domain, they will find you from the WHOIS info.