Yet another TM question

[slobizman]

I'm looking at buying a dictionary name domain name that has two trademarked filed for it, one live one dead. Neither are even close to the class of use for which I would use the name, which I'd begin using within weeks in commerce.

I understand that the same mark can be used in different classes, but am I asking for trouble regardless?

[Dave Zan]

Originally Posted by slobizman

I'm looking at buying a dictionary name domain name that has two trademarked filed for it, one live one dead. Neither are even close to the class of use for which I would use the name, which I'd begin using within weeks in commerce.

I understand that the same mark can be used in different classes, but am I asking for trouble regardless?

Sure, especially if you're potentially dealing with an unreasonable party who
might have the law on their side. It's a fact of life.

As long as you're prepared to defend it to the death...

[Creature]

I would also Google it etc to check as best you can that your intended use is distinctive.......then buy it, use it and file for your own trademark. Thanks to the lawyer Brett, I obtained a US registered mark for a dictionary word in just 10 months.

[DNQuest.com]

Usage is an important part domains. If it is in a class where there is no TM, and if it generic, it will be tough for a TM holder to prevail.

[slobizman]

Originally Posted by DNQuest.com

Usage is an important part domains. If it is in a class where there is no TM, and if it generic, it will be tough for a TM holder to prevail.

That's what I was thinking.

[Brett Lewis]

I hate to say it, but it really depends on what the word is and what the company is that holds the trademark. As a general proposition, trademark rights are not monopolistic rights in gross when dealing with dictionary words, but without knowing more, it is difficult to say how likely it is that you would have an issue with the prior trademark holder. Some companies are overreaching. Others, not so much.

[slobizman]

Originally Posted by Brett Lewis

I hate to say it, but it really depends on what the word is and what the company is that holds the trademark. As a general proposition, trademark rights are not monopolistic rights in gross when dealing with dictionary words, but without knowing more, it is difficult to say how likely it is that you would have an issue with the prior trademark holder. Some companies are overreaching. Others, not so much.

I understand what you are saying. It's not a major company, looks relatively minor in fact. And the uses could not possibly be conflicting.

Additional question: If I were to buy the name and just hold it for some time, if I did not park it or monetize it in any way, it's pretty much the same thing right: I would not be intentionally infringing and it would depend on the effort they wanted to bring, right? Again, remember it's a dictionary work, something like "Therefore" or similar.

[Dave Zan]

Originally Posted by slobizman

Additional question: If I were to buy the name and just hold it for some time, if I did not park it or monetize it in any way, it's pretty much the same thing right: I would not be intentionally infringing and it would depend on the effort they wanted to bring, right? Again, remember it's a dictionary work, something like "Therefore" or similar.

Unfortunately there have been various UDRP decisions against respondents
with those sorts of circumstances you described there, more so if they don't
reply. If more panelists adopt that view, more or less one will have to put up
something ASAP.

Off-topic, but was obtaining a US-registered trademark for a dictionary word
in 10 months a record?