Issue with "Dead" trademark, yet active business

[slobizman]

I own the a domain name I'll call CoffeeWorld.com for this discussion. When I bought it last year, I checked the trademarks and there was a trademark record for "Coffee World" that had a status of "DEAD", canceled in 2004.

HOWEVER, there still was, and still currently is, the website CoffeeWorld.org that has information about coffee and publishes a physical magazine called Coffee World. For some reason they let their trademark expire.

So, even though there is an active magazine called Coffee World, do I have a trademark issue with CoffeeWorld.com considering they let their trademark expire ?

Could I start my own informational site with my domain name and even go so far as file and get a trademark for Coffee World?

Thanks! This is a very strange situation.

[kfordahl]

I am an attorney but I won't discuss the merits of a possible trademark infringement claim, because that is an issue for your own legal counsel. However, I would like to point out that the United States recognizes trademark rights as of the date a mark is first used in commerce. A REGISTERED trademark is one way to prove that someone has rights to a name, but common law rights (rights stemming from continuous use in commerce) can attach at any time, without registration (subject to a variety of factors). Even if this "Coffee World" company no longer has a mark registered with the USPTO, they may still have very strong common law rights that you could be infringing.

The answer to your question is fact-specific and you would be best served to retain competent legal counsel on this issue...review other threads in this forum for some good recommendations.

[slobizman]

Thank you. One followup if I could:

Here is their class and description: "(CANCELLED) IC 016. US 038. G & S: magazines, brochures and pamphlets dealing with topics centered on [subject matter]. " That does not say anything about a web site. If I merely had a news-oriented web site would it really be infringing on it's trademark for mprinted matter?

[kfordahl]

The test isn't what a cancelled trademark said they wanted to use the mark for, the test is what they currently ARE using their mark for. If they are using the mark for news services (and the medium is unlikely to matter much, in this day and age), then your use for news services could infringe. That is not to say it WILL, but you need to be sure you are comparing what they do to what you want to do. If they are using their site to sell "coffee" and a related magazine, you will want to carefully choose your use to be unique and different from their use. For example: it's not, how close can you come to doing what they do with a similar name (because that reeks of the proverbial "bad faith"), you want to have your name/domain name because indicative of YOUR services that are unique to YOU.

[slobizman]

Does just own the name, and having it parked, infringe? Since I'm not showing the intent of what I would do with it, perhaps it does not.

[DNGeeks]

Typically most parked domains are going to infringe because of being used in bad faith. Most parking companies will put links and/or content on parked pages that are similar to or will compete with the TM owner.

Since this TM was filed for magazines, brochures and pamphlets, you may be just fine if you used coffeeworld as a website to list various coffee companies, brands, links and referral url's or even to sell coffee related products from a shopping cart.

Yes you may be using their name, but in the instance of a WIPO case since you aren't competing directly against what their TM application was for you may not be found to be using the domain in bad faith.

Note I say "may" a lot. You never really know how it will turn out until it's over. But in previous cases WIPO has looked strongly at a TM application and compared that to what the infringing domain is doing.

As always, speak with a competant trademark/IP attourney who is knowledgable in these kinds of issues before you proceed.