Legal advise on a TM

[deepstar]

If a company has a trademarked domain such as xxxxxx.com and offers to sell the domain name to you are you still infringing on the trademark or is there a simple clause that can be put in the domain sales agreement to ensure they don't take the name back after they sell it to you?

Any assistance is greatly appreciated.

Eric

[trader]

Good question. Does the TM exactly match the domain?

If so, ask them to include the Trademark along with the domain as it would seem unlikely they would want the TM if willing to sell the name.

Perhaps offer to reimburse them the cost of the TM. Yes, Trademarks can be legally sold as far as I know.

P.S. Our resident domain dispute pro John Berryhill would be able to give expert advice on this. If a fair amount of money is involved it would be smart to hire an attorney like John to review or write a contract.

[deepstar]

[quote=RealNames]Good question. Does the TM exactly match the domain?

Yes, the TM is the exact domain name. Regarding purchasing the TM, I have no experience in this arena. Is this a timely process, will attorneys need to write up additional paperwork for this?

Ideally, if I can put something in the sales agreement that states that they will not pursue damages due to the purchase of the domain I believe I could save some time and money. I would simply wait until the TM expired.

Thanks,
Eric

[Steen]

Legal advise on a TM

I don't think DNForum is the place to seek "legal advise".

[deepstar]

Well thank you for your input Steen, I will take it into consideration. I am more interested to see whether or not other members have ran into the same situation and what they did to settle the issue.

[reg]

Originally Posted by Steen

I don't think DNForum is the place to seek "legal advise".

hmmmmmmmmmm....legal issues forum....hmmm....several internet lawyers of renown browse this very forum......hmmmmmmmm...some have even given free advice......hmmmmmmmm.....nah, can't be the right place to ask!


hehehe
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[Rocket2Uranus]

Pretty much anything can be a part of a contract if worded appropriately. If you are serious about following through with this, it would be adviseable to hire an attorney to protect your interests.

[jberryhill]

some have even given free advice

A lot of the questions here are useful "jumping off" points for discussing various legal issues, but anyone seeking reliable advice on a specific question of concern to them should consult an attorney on their own.

There is a bundle of issues in that question. The short answer is yes, it is something you want to address in the contract. How you want to address it depends on the circumstances. Such circumstances include things like, "What are the relevant goods and services to the trademark?", "Do you plan on using it for the same or similar goods and services?", "What are their future intentions concerning the trademarked goods and services?", "What is their expectation concerning what you intend to use the domain name for?", etc., which might lead to consideration of whether you want them to assign the trademark to you along with the domain name. All of which MovieDomains nailed in his first sentence.