i own trademark, not domain

[smashfactory]

weird situation- years ago i owned a domain and site- i had the name trademarked- i sold the domain and the site, but they never pursued the trademark from me- it is still live, in my name-
the domain is about to expire- they let it all go down the tubes-
i know some drop catcher will get it- i wont even try and pay those prices- plus, everyone says godaddy cant catch their own stuff for squat.

question is- when someone gets it- and he trademark is live, in my name- do "I" have the right to tell them they can not use it, send a stupid c&d, and rip the domain from their hands?

i am being over dramatic here this is a kinda weird situation- i would like the domain back if i can catch it- if i cant i do not want to pay out the butt for it- it is not a premium domain, i thought of the name in the first place-

well?

[Banned: domain newbie]

if you trademarked it with ".com"- probably yes
if you trademarked it without ".com" - probably no

JM2C

[namestrands]

it will no doubt cost your more than the drop price to pursue it.

You could always issue a C&D to the drop program were they to list it, they do tend to give it back.

[fab]

if you trademarked it with ".com"- probably yes
if you trademarked it without ".com" - probably no

I think this is irrelevant.

If you own a trademark, without using it, you really don't have a case.
Making an attempt to regain a domain you sold, thereby forfitting away usage rights, doesn't make sense, but sending threatening C&D's may help anyways.

[cshel]

unless whoever picks it up cares enough to bother researching the situation and fight you, they'd probably just do a quick check to see if you indeed have an active TM registration and surrender to avoid litigation.

[DNQuest.com]

Yes, you do have rights to the name.

[smashfactory]

well, if they did a trademark search they will clearly see it is in my name- can you sell a trademark? could that be a route to go?

[DNQuest.com]

Yes, you can sell TM rights, it happens all the time. I am surprised that when you sold the domain that the buyer did not obtain teh TM too. Or at least inquire about it.

[smashfactory]

well, that got a litlle messy- he was supposed to get it- but, it was part of a deal concerning stock for it- well, they never issued me the stock- so i never issued the tm- and, oddly enough, we just never got back with each other on it-

[cooljeba]

Hmm, even though you own the trademark there plus point would be since you sold the domain this proves that you no longer needed it. But still since you own the trademark you do have an upper hand ;-)

..:: peace ::..
Jeba

[smashfactory]

the whole thing was kinda weird- he never came after the trademark- maybe because he had no intention of issuing me the stock- i dont know- but, he had the name, let the site run down, and now it is expiring- i wish i could grab it but i know i wont- i guess we will see who gets it- its not a generic name, its a brandable one i created- so , i dont know ;-(

[aZooZa]

The deal with the domain and the TM should have been wrapped up in one contract. Had it been so, and you haven't received what was contracted as yours, then the deal would have been broken and your redress would most likely include reclamation and pursuit of the TM rights, unless otherwise contracted. This is no issue of conjecture; simply contract terms. In other words, you need to look at the fine print in the original deal.

From what you post, it looks like there was never any acceptance on your part regarding the loss of TM rights, however it could be construed that you handed them over 'in good faith' when you disposed of the name.

And yes, if you cannot show continued use of the TM you're probably without claim.

All IMHO.

[DNQuest.com]

And yes, if you cannot show continued use of the TM you're probably without claim.

He has a registered Mark, not a TM, big difference. It would need to be challenged to have his registration revoked, at least I beleive that is what needs to happen.

[smashfactory]

you all are losing me ;-(
who is "he has a registered mark" who is he?
challeneged by who?
oh man i am lost in all this now

[DNQuest.com]

well, if they did a trademark search they will clearly see it is in my name

Smash, this is what you posted... Doing a TM search means searching at teh USPTO, which means you have a registered mark. Now, if you are telling me that you did not register the TM. Then there is no search you can do to shows you own the TM. You would need to prove you actually own the TM. So at this point, did you register the TM or not?

If you did, what I said I stand by...

If you did not, then I take it all back. By selling the site and turning it over, you may not have TM rights since you gave the site away. Which make me more confused about handing the TM after you get your stock.

ugh.....

[smashfactory]

didnt mean to cause any headaches ;-( if you go to the USPTO- and put in my name i paid a lawyer to get a mark on- it comes up with for the name-

Live/Dead Indicator LIVE
Type of Mark SERVICE MARK
reg date, reg number, date it was published for opposition, blah blah

[cooljeba]

Originally Posted by smashfactory

i wish i could grab it but i know i wont- i guess we will see who gets it-

Hmm you really intrested in the name ??

If you are not that intrested just someone else have it. No more headaches to anyone he he..

..:: peace ::..
Jeba

[smashfactory]

well, it was just a question- sorry to make it confusing- i just was in a weird situation and wasnt sure where to go from here- thanks all ;-(

[Jeffreyw]

You still the legal rights to get the domain back, but in my opinion it's unethical for you to do that. You just sold the domain before, and now you want it back.

[actnow]

The strength of the TM sounds iffy.

So, if someone else catches the domain, the only way you will get it back is
thru UDRP (or WIPO) proceedings which will cost a minimum of $ 1,500.

But, you also said that you were not willing to bid for it.
Therefore, I doubt you will spend the money for the UDRP.

If a major domainer ends up with the domain, I doubt you will be able to
bully them into giving it to you.

I would suggest you bid for the domain. Or, offer to sell the TM to the new
owner of the domain. They might be interested.