TM Filing Question

[Raider]

This might be slam dunk question for you guys,

I have a domain that has been dead since I got it, its generic, Something like sortfiles,com (not the name)

I looked in TESS and found a TM for sortfiles, the G&S was "File Sorting", but the TM's is dead....I know what John said about a Dogs license expiring, still makes him a dog, My questions is, can I file for a TM on this name for the same Goods and Services "File Sorting" since the other is expired?

[DNQuest.com]

This might be slam dunk question for you guys,

I have a domain that has been dead since I got it, its generic, Something like sortfiles,com (not the name)

I looked in TESS and found a TM for sortfiles, the G&S was "File Sorting", but the TM's is dead....I know what John said about a Dogs license expiring, still makes him a dog, My questions is, can I file for a TM on this name for the same Goods and Services "File Sorting" since the other is expired?

Are you actively using the name in the domain in a commercial capacity to acquire TM status? You also have the option of "intent to use". But either way, you jsut don't fill in paperwork and send money then boom, you have a TM. TMs are earned through commercial usage. Then you file your earned TM to get a registered mark from the governmant

[jberryhill]

but the TM's is dead

Most of the time, when people in the forums are talking about a record listing "DEAD" in the TESS database, they do not distinguish been a cancelled registration or an abandoned application.

This OP is no exception.

Are you talking about an mark that was once registered, or are you talking about an abandoned application?

can I file for a TM on this name for the same Goods and Services "File Sorting" since the other is expired?

If what you are looking at is an abandoned application that was refused on grounds of descriptiveness, then yours will be too.

[Raider]

Are you actively using the name in the domain in a commercial capacity to acquire TM status?

Not yet....The domain has been dead since I got it, but it has some history from the previous owner of having "file sorting" results, this has me a bit concerned. If I'm able to aquire a TM by whatever means, I like to do it....not quite sure what's involved in that.

Most of the time, when people in the forums are talking about a record listing "DEAD" in the TESS database, they do not distinguish been a cancelled registration or an abandoned application.

This OP is no exception.

Are you talking about an mark that was once registered, or are you talking about an abandoned application?

If what you are looking at is an abandoned application that was refused on grounds of descriptiveness, then yours will be too.

There are actually 2 applications by the same party, both were "Abandoned"

Current Status: Abandoned-Failure To Respond Or Late Response

Current Status: Abandoned: No Statement of Use filed after Notice of Allowance was issued.

Would you say I'm OK to proceed?

[Creature]

I know what John said about a Dogs license expiring, still makes him a dog

That's great..........is there any chance of a regular video from you John just talking over domainer questions or wipo decisions?

If I'm able to acquire a TM by whatever means, I like to do it....not quite sure what's involved in that.

I picked up a US TM recently thanks to Brett, I think the most expensive part of it was the initial Thomson Report which was around $600. After that there's an evaluation fee and filing fee and quite a long wait of around 10 months.

[jberryhill]

Current Status: Abandoned-Failure To Respond Or Late Response

Current Status: Abandoned: No Statement of Use filed after Notice of Allowance was issued.

Okay.... the first one was never registered. The application was refused for some reason, and the applicant did not contest the refusal. Depending on the year it was abandoned, you might be able to click TDR and see the reason why (older abandoned files do not have the entire contents scanned to .pdf)

The second application (and maybe even the first one) was an intent-to-use application. It was deemed to be registrable as a mark, but the applicant never demonstrated to the USPTO that they actually began using it.

(The intent-to-use applications are designated by "filing status" 1B)

There's a bunch of data fields in those records. They all mean something.

[Raider]

I picked up a US TM recently thanks to Brett, I think the most expensive part of it was the initial Thomson Report which was around $600. After that there's an evaluation fee and filing fee and quite a long wait of around 10 months.

Yuck!.........Can anyone provide a link of the process?

Okay.... the first one was never registered. The application was refused for some reason, and the applicant did not contest the refusal. Depending on the year it was abandoned, you might be able to click TDR and see the reason why (older abandoned files do not have the entire contents scanned to .pdf)

The second application (and maybe even the first one) was an intent-to-use application. It was deemed to be registrable as a mark, but the applicant never demonstrated to the USPTO that they actually began using it.

(The intent-to-use applications are designated by "filing status" 1B)

There's a bunch of data fields in those records. They all mean something.

Thank you JB....I greatly appreciate the info.

[Creature]

http://www.digital-trademarks.com/facts.html#13

The Trademark Application Process

Once your application is filed with the PTO, the PTO will issue a filing receipt. The trademark examining attorney will examine the application and may issue what's called an office action requesting changes to the application. If these changes are insignificant we will authorize them and inform you of them. If the changes are significant, we will consult with you to determine a course of action. Once the application has passed the examination phase, the mark will be published in the Official Gazette. Publication in the Official Gazette gives interested parties an opportunity to file a Notice of Opposition or request for extension to file a Notice of Opposition. If there is no opposition or the opposition is unsuccessful, the PTO will issue a Certificate of Registration.

[Raider]

Thanks for the info Creature.... I appreciate it