TM names

**Banned: E=MC2** · 01-09-2003, 09:09 AM

after purchasing a tm domain, is there a certain time limit that the company has to contact you? If I am not contacted can I sell the TM name?

thanks

**DNQuest.com** · 01-09-2003, 09:41 AM

Having a TM name doesn't prohibit you from selling the domain. In theory, if you profit from selling a TM registered in bad faith (IE- registering TM name for sole purpose of reselling), there could be a possibility you could be liable even after you sell the domain. The buyer would probably state (if caught), "Well I bought this domain from so-and-so for $$$$.$$". If the $$$ part is significant, I'm sure the TM holder may want that money (plus legal costs)

Pretty scary, huh? I'm not sure what lengths companies will go through, but that senario is plausable.

**Banned: E=MC2** · 01-09-2003, 09:43 AM

thank you

PACKERGARE · 01-10-2003, 01:43 PM

I would not even try to sell. let the comp contact you

**namedropper** · 01-11-2003, 12:15 AM

There is no time limit. Selling the name is illegal in the US, as it violates the Anticybersquatting Act of 1999.

Just don't register trademarked names. Is that so hard to figure out?

--
Dan Norder - Savanna.com, FineGold.com, etc.
High profile and niche domain names for sale

**Ari Goldberger** · 01-13-2003, 03:39 PM

The issue is not whether the word/term in the domain name is the subject of a trademark, the issue is the extent of the trademark holder's rights. If it's a common word/term or descriptive term, the tradmark holder's rights are limited, and you have more flexibility in what you can do. However, offering domain names for sale is risky and may still invite a fight. If the trademark is for a unique coined term, you probably should not even had it, let alone offer it for sale.

**dtobias** · 01-13-2003, 04:25 PM

There's also the doctrine of laches (I'm not a lawyer, but I have managed to absorb some of their terminology) which holds that if you've been doing something with the knowledge of the trademark owner for long enough, they can't suddenly start objecting to it. This wouldn't apply if you made a major change to the nature of your use of the name, however, as they could then sue you about your new usage -- for instance, if you passively held the domain name for long enough, maybe they'd be barred from suing you strictly for passive holding, but if you then started using it for an active web site they'd have a new claim; or, if you used it for years to run a noncommercial fan or protest site without objection, then turned it into a site selling competing products.

**jberryhill** · 01-13-2003, 08:10 PM

"the issue is the extent of the trademark holder's rights"

...and the domain registrant's intent.

"laches"

"Long enough" is classically 6 years or so, and it is better to be able to rely on something other than bare inaction on the part of the TM holder, such as a threat on which they never followed through, thus giving you a reason to rely on their inaction being the result of a conscious decision upon which you were entitled to, uh, rely.

**RMF** · 01-13-2003, 08:35 PM

Last year I sold a TM name for $12K. The company use to own the domain name, but didn't renew it. I had it for about 6 months before they contacted me. Prior to them contacting me, I had a site based on their product, and I didn't attempt to sell the domain name.

RMF

**HOWARD** · 01-14-2003, 07:58 AM

Another defense is "equitable estoppel". If you can show that you have actively used the web site under the domain with the trademarked name and that trademark owner has done nothing to prevent its use, the TM owner could be equitably estopped from attacking the domain at a later date. The catch is that you must show that the TM owner knew, or should have known of your use and did nothing.

**tassos** · 01-17-2003, 12:46 AM

[QUOTE]Originally posted by Ari Goldberger
[B]The issue is not whether the word/term in the domain name is the subject of a trademark, the issue is the extent of the trademark holder's rights. If it's a common word/term or descriptive term, the tradmark holder's rights are limited, and you have more flexibility in what you can do. ]

i like that part....if it is a common word..........

in Greece , where i am , pepsi is a common word....

i just own the www.pepsi.gr
i don t want to sell it! thats a statement!

**tassos** · 01-17-2003, 12:49 AM

does anyone knows any decisions against TM?for a common word
i ll need it for sure
thnx

**namedropper** · 01-17-2003, 01:06 AM

Originally posted by tassos
i like that part....if it is a common word..........

in Greece , where i am , pepsi is a common word....

i just own the www.pepsi.gr
i don t want to sell it! thats a statement!

I'm sorry, but that's silly. Pepsi may be a common word, but it's not a generic word. Generic is what's important, not how "common" it is.

If it weren't for PepsiCola making a product called Pepsi would you have ever used the word pepsi in conversation? No? Then it's not generic, and you have no right to it.

**tassos** · 01-17-2003, 01:09 AM

pepsi is a word that we use often..40% of people suffer from bad pepsi
pepsi in greek is what the stomach does
isn t generic?

**DomainPairs** · 01-17-2003, 01:10 AM

"windows" is a common word that was hijacked by a software ideas pirate and tm squatter. I think he has had a couple of cases over this name.

**tassos** · 01-17-2003, 01:14 AM

don t forget that pepsi took the name from the greek dictionary...if you see in the trademarks Athens ,Apollon thesis aspis idea and many other greek words and ancient names are TM , as a greek leaving in greece i think i have the right to use them...

**Banned: timechange.com** · 01-17-2003, 01:18 AM

Tassos is correct

The same for Nike.

Oh hell, at least I own Parthenon.info

**namedropper** · 01-17-2003, 01:23 AM

Originally posted by tassos
don t forget that pepsi took the name from the greek dictionary...if you see in the trademarks Athens ,Apollon thesis aspis idea and many other greek words and ancient names are TM , as a greek leaving in greece i think i have the right to use them...

Ohhhh, I get it. I thought you meant like using "pepsi" as a common word for soda pop or drinks regardless of whether it's really Pepsicola cola or not. I know some places use "Coke" in that way.

If you use Pepsi for something related to the greek word and not sugary water than you should be fine.

Ditto for Nike for justice instead of shoes, etc...

**tassos** · 01-17-2003, 01:29 AM

where can i find this for nike? cause i m sure i m gonna need it, and i don t think i ll find laywer good for these things here in greece .i ll have to find myself cases that are with me..

**spietreser** · 01-19-2003, 09:46 AM

Originally posted by RMF
Last year I sold a TM name for $12K. The company use to own the domain name, but didn't renew it. I had it for about 6 months before they contacted me. Prior to them contacting me, I had a site based on their product, and I didn't attempt to sell the domain name.

Were you selling their product on that website?

Question: in general, if you are selling their product, then they can't say that they are having losses because of that, or can they?