Important Trademark Domain Issue - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

DomainSage · 11-12-2002, 11:00 PM

When a domain name is transfered from one company to another and the first company holds a trademark on the domain name, what happens to the trademark??

Do they still get to keep the trademark and come sue me later or does it become my propoerty or is it delted???

**GiantDomains** · 11-12-2002, 11:15 PM

You would buy the TM too...a package deal...or they would give it to you free.

DomainSage · 11-12-2002, 11:21 PM

So they have to transfer it to me by law? And is there a form I fill out or is it automatically transfered to me as soon as the domain is transfered to me??

How sure are you about this?

**izoot** · 11-13-2002, 07:55 AM

Domain...I don't think its actually the case that they have to give you trademark rights along with the domain. That is, unless that is what you agreed to it in the first place.

Their TM could go beyond applying to just the domain ( i don't know in this case as you have not supplied that info ) and apply to products or services as well and they just decided to give up the web portion of the business. If which case, they would allow you the rights to use the tm name on the web, but not transfer exclusive rights of usage to you.

They do not have to transfer it to you by law unless it was stipulated in the sale, it is not automatly transfered with the domain. You will need a written contract stating that the TM ownership is being transfered to you, and then the appropriate paperwork from the trademark office will be needed to be filled out.

Get everything in writing...assume nothing. Good luck : )

**HOWARD** · 11-13-2002, 12:30 PM

I assume that the TM holder uses the TM for purposes other than the domain that they sold to you. typically, they should also have provided in the transfer agreement that you have a license to use their TM in the domain and the contents of your web site.

even if they didn't give you a license to use the TM, the mere fact that they sold the domain to you would act as an estoppel and waiver against any attempt to sue you for using the TM.

However, if they sell the TM to a 3rd party, and there is no license agreement, the 3rd party may be able to bring an action against you for the unauthorized continuing use of the TM.

Moral of the story is to include a licensing provision in your transfer agreement if the domain contains trademarked words.

DomainSage · 11-13-2002, 12:54 PM

They have a trademark on the actual ".com", what happens then?

Before the transfer is done, is there any form I should ask of them to submit to me giving me full rights?

Thanks.

Drewbert · 11-14-2002, 12:22 AM

They have a TM on blahblah.com, yet they're selling the name to you?

This just sounds downright bizarro.

DomainSage · 11-14-2002, 12:30 AM

is there a special form for trademark transfers?

**HOWARD** · 11-14-2002, 11:10 AM

There's no special form. It is simply a right to use the TM as part of the domain name. If the domain name itself is trademarked, then it is implicit in the sale that you now own the TM so long as you have a written transfer agreement.