Possible Trademark Problem W/.COM

[Kenzilla]

In preparing for this post I learned some things that make this story a little more interesting.

Back in 2002 I registered both the .com and .net for a product I intended to develop. Actually the product was already being made, my idea was to use it for a purpose similar but not identical to the purpose it is made for. Fast forward to 2011 and I'm going to park the domain on Afternic but I get a message from them saying they are going to have to review parking the dname because of a possible trademark violation.

I do a trademark search today and apparently this trademark has been applied for multiple times all the way back to 1986. Each one was abandoned or not followed through on or whatever. But, in June of this year a trademark application was filed and on November 2nd a Non-Final Action was mailed which I assume is just part of the process. The stated purpose or use of the product being trademarked is exactly the same idea I had back in 02. Another detail about this is the trademark is not exactly what my domain name is, it has two words added to the front i.e. "The XXXXXX" and then my two words which make up the domain name.

The fact is, I snoozed, I should have followed through with this back when I first regged the domain and all this would be a moot point. And, I'd be willing to work something out or work with the guy in some way both of us could live with.

I just searched the .com of the exact phrase trademarked (containing two more words than my domains) and found a very basic, rather poorly done site. A very basic template with fuzzy cell phone photos. I wouldn't be adverse to getting in touch with this guy and seeing if we could work together in marketing this product.

I'm not going to get hung up on this, I have bigger fish to fry but if I could follow through with what I intended to do back in 02 without a hassle I probably would. I'd consider this a wake up call and trademark the domain and move ahead. After all, the "use" description in the trademark application is not a patent.

But my questions are, is what matters in this case the first to register a trademark? Does it make any difference that I registered this name 9 years before this trademark application? And lastly while the name trademarked does contain the two words in the domain, it also has two other words that are not part of it, does this matter?

Thoughts? Ideas? Comments?

Ken

[James Jean]

The fact that you registered the name yet did not do anything with it despite a posteriori knowledge that other entities had right leaves you at a STRONG disadvantage in my opinion; especially with having the name parked- proving "intentions" is blurred.

[Kenzilla]

The fact that you registered the name yet did not do anything with it despite a posteriori knowledge that other entities had right leaves you at a STRONG disadvantage in my opinion; especially with having the name parked- proving "intentions" is blurred.

Not exactly sure what you're saying in the "posteriori" line but my knowledge of the right of others only has to do with 6 months of the 10 years I've had this name. I assume as it was not mentioned the fact the registered trademark has two words in it my domain name doesn't make a difference. As for parking, this was for a period of less than 30 days and once I got the message about it being checked out I pulled it off Afternic altogether. I guess the lesson is, if you register a domain, do something with it (beyond parking).

[Cartoonz]

You state that numerous entities have tried to TM the exact phrase that you have - and failed.
A "Non final" action usually precedes another failure...
if you want, PM me the name and I'll look at it closer... I'm curious why all the failed attempts at TM.... descriptive, perhaps?