Just got an inquiry, And their trademark is shown as Dead, what should I do????

[kingdon]

I got this e-mail today and have removed the details for obvious reasons. The company is a large company that's been in business for 50 years. The used to have a trademark on their name in the 60's, but the status is shown as dead. Here is the e-mail and Trademark report. I haven't been in this section for the longest time. Can any of you legal eagles shine some light on the situation. And a little advice on how to move forward would be much appreciated.

The e-mail

Hi

I am an executive at ***** Inc. We are distributors of *****. I see you have the domain name *****.com registered and are not actively using it. May I ask how or when you came about registering this name or if you are interested in giving up this domain name.




The tademark info:

Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Serial Number ********
Filing Date May 6, 1966
Registration Number ******
Registration Date September 5, 1967
Owner ************
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15.
Live/Dead Indicator DEAD

 

[chatcher]

You might want to edit your post and also remove the tm registration number, if you want to be anonymous about it!

 

[kingdon]

Thanks arbitrage.

 

[jberryhill]

There are a number of ways to interpret what you are trying to say by "they used to have a trademark", since it is never clear here whether folks mean to refer to a "registration" or a "trademark".

It is certainly possible for a party to allow a federal registration to lapse without ever abandoning the underlying trademark.

For specific answers to specific questions, you should consult with an attorney.

 

[charles]

Originally posted by jberryhill
It is certainly possible for a party to allow a federal registration to lapse without ever abandoning the underlying trademark.
For specific answers to specific questions, you should consult with an attorney.

Yeah. What you're doing is kind of like looking out the window and seeing that it's not snowing. Doesn't mean it ain't colder than hell out there.

The real question is essentially: "Is there a likelihood of confusion between the domain name and a mark that is currently used in commerce?"

And like John said, you need specific answers to these kinds of questions.

 

[INFORG]

To me it sounds like a "we'd like to buy this name" email as opposed to a "you're gonna give this name back email". I would tell them "I saw this name was available and I liked it - I plan on developing it, but if you would like to make an offer you may"

Note, this may not be what the legal experts would recommend, but I'm a gambler.

 

[kingdon]

I see what you mean jberryhill and charles, but I'm still a little confused. The mark that is currently used in their commerce is shown as "Live/Dead Indicator DEAD". Does the fact that the status is "DEAD" Strengthen my ability to keep the domain if a dispute were to arise.

I did respond to their e-mail (see below) And I hope you're right 2gajgops, like to think the glass is half full myself. Thanks for the feedback.


Hi ****, thanks for the inquiry. I am a webdeveloper with 5 projects going on right now, and haven't gotten to *****.com yet. I should be getting to it around April. Thanks for the inquiry and have a great weekend.

Donald Endriss

 

[chatcher]

I am not a lawyer.

The fact that the federal registration is dead would seem to work in your favor in terms of bad faith. You did a quick TM search, found the dead registration, and not being personally familiar with the brand, you assume it is no longer in use. Doesn't sound like bad faith.

The fact that they may still have an active trademark despite their failure to keep the registration current would of course give them standing to file an action against you, and it would be up to the arbitration panel or court to decide the merits of the case.

But to me, a dead registration seems much better for you than a live one.

Again, I am not a lawyer.

 

[domainduck]

I would ask them for a better expaination of,

"May I ask how or when you came about registering this name or if you are interested in giving up this domain name. "

ie. The name expired, so I registered it... What do you mean by giving it up?


quack

 

[HOWARD]

I AM a lawyer and i agree with ARBITRAGE. The fact that the Registered Trademark is dead or abandoned is a point in your defense if a UDRP action is brought.

 

[jberryhill]

It was also a stylized mark, which may or may not be important, but this is not the appropriate forum for discussion specific problems.

It's sort of like asking, "I was in a car accident, am I liable." Life is not that simple.

 

[kingdon]

Interesting thoughts, and since I've already sent my reply, I must sit and wait. I don't think I should ask valid questions at this point, don't want to seem anxious. Their next e-mail will expose their intentions. I'd like to think that since their trademark status is dead, my position is stronger. But they've been in business for 50 years and might like to fight, even when standing on one leg. And sometimes endurance is stronger than the truth.

So I think I will be professional and polite, and help them to buy this name. But if they challenge my rights to own this domain. I would like to be able to calmly "talk the talk", or at least not sound like an angry sailor.

 

[charles]

Originally posted by arbitrage
I am not a lawyer.

The fact that the federal registration is dead would seem to work in your favor in terms of bad faith. You did a quick TM search, found the dead registration, and not being personally familiar with the brand, you assume it is no longer in use. Doesn't sound like bad faith.

The fact that they may still have an active trademark despite their failure to keep the registration current would of course give them standing to file an action against you, and it would be up to the arbitration panel or court to decide the merits of the case.

But to me, a dead registration seems much better for you than a live one.

Again, I am not a lawyer.

A recent Ninth Circuit case on appeal from Oregon Federal District Court supports your view. This case is interesting particularly because the plaintiff won on claims of trademark dilution but STILL DIDN'T WIN THE ACPA CASE, AND DIDN'T GET THE DOMAIN NAME! The case is called Interstellar Starship Services, Limited v. Epix, Inc., No. 01-35155 (9th Cir. 09/20/2002), and I bet you can find it on Findlaw.

II. CYBERSQUATTING


[53] Cybersquatting is the Internet version of a land grab. Cybersquatters register well-known brand names as Internet domain names in order to force the rightful owners of the marks to pay for the right to engage in electronic commerce under their own name. See Virtual Works, Inc. v. Volkswagen of America Inc., 238 F.3d 264, 267 (4th Cir. 2001). Congress enacted the ACPA because cybersquatting "threatened 'the continued growth and vitality of the Internet as a platform' for 'communication, electronic commerce, education, entertainment, and countless yet-to-be-determined uses." Id. (quoting S. Rep. No. 106-140, at 8 (1999)).


[54] A cybersquatter is liable under the ACPA to the owner of a protected mark if the cybersquatter has:


[55] (i) a bad faith intent to profit from that mark; and


[56] (ii) registers, traffics in, or uses a domain name that --


[57] (I) in the case of mark that is distinctive


[58] . . . , is identical or confusingly similar to that mark that is distinctive.


[59] (II) in the case of a famous mark . . . , is identical or confusingly similar to or dilutive of that mark. See 15 U.S.C. § 1125(d)(1)(A) (emphasis added).


[60] A finding of "bad faith" is an essential prerequisite to finding an ACPA violation. Congress enumerated a list of nine factors to consider "in determining whether a person has a bad faith intent." Id. Congress did not mean these factors to be an exclusive list; instead, "the most important grounds for finding bad faith are 'the unique circumstances of the case, which do not fit neatly into the specific factors enumerated by Congress.' " Virtual Works, 238 F.3d at 271 (4th Cir. 2001) (quoting Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.3d 489, 495 (2d Cir. 2000)). In addition, the ACPA contains a safe harbor provision: Bad faith "shall not be found in any case in which the court determines that the person believed and had a reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful." 15 U.S.C. § 1125(d)(1)(B)(ii).

[61] In this case, the district court expressly determined only whether ISS violated the ACPA by registering the domain name www.epix.cc -- a domain name which Epix now owns and which is not at issue on appeal. The district court did not consider Epix's ACPA claim as it related to ISS's use of the www.epix.com.

[62] The district court found, however, that Tchou and ISS adopted the www.epix.com domain name in good faith. In particular, it determined that Tchou adopted the domain name epix.com as a descriptive term to connote electronic pictures. Evidencing his good faith, Tchou performed a web search on "epix" before registering epix.com, but did not find Epix because it was not yet on the Internet. Furthermore, Tchou engaged in a bona fide use of his website. To transform his website into a "widely known internet portal site," Tchou continuously used the domain name and invested money on hardware and software as well as significant amounts of time on the development of a viable business plan.


[63] The district court rejected Epix's farfetched idea that Tchou registered epix.com in an effort to assist his employer and Epix competitor, Intel. The district court did not, however, comment on Epix's other purported evidence of bad faith -- ISS's offer to sell Epix the epix.com domain name for $25,000. While offers to sell a contested domain name may in certain circumstances be probative evidence of bad faith, see Panavision Int'l L.P. v. Toeppen, 141 F.3d 1316, 1323 (9th Cir. 1998), here, the offer to sell came from ISS's attorney in the context of settlement negotiations after the commencement of litigation; Tchou was not even present. Epix never established before the district court that the settlement offer was made to extort Epix or for any reason other than to settle the case. Rather, the evidence suggests that ISS offered to sell its investment in hardware, software, and time in an operational website devoted to the Clinton Street Cabaret.


[64] The district court's finding that Tchou adopted www.epix.com in good faith was not clearly erroneous considering the "unique circumstances" of this case. Without a finding of bad faith, Epix's cybersquatting claim necessarily fails.

Please note that even the offer to sell was not in bad faith because "the offer to sell came from ... attorney ... never ... to extort ... or for any reason other than to settle the case." So you see, inserting a lawyer into your transaction can even insulate you from a claim of bad faith. Now why would that be? Priest-craft, anyone? Surely not!

 

[kingdon]

Thanks Charles, that makes me feel a little more relaxed. I'm not the type to throw this is their face. I appreciate the facts, might take the wind out of their sales if they decide to go down that road. And if that's the alley they drag me into, then it might be time to insert a lawyer into the transaction as you suggest, for that extra insulation we all crave. Thanks for the post.

 

[charles]

Originally posted by kingdon
Thanks Charles, that makes me feel a little more relaxed.

Adds years to your life

Chas

 

[tassos]

Word Mark TRAVELPAD
Goods and Services (ABANDONED) IC 009. US 021 023 026 036 038. G & S: Computers and software for gathering, transmitting, and displaying electronically published works in the fields of travel and tourism
i regged travelpad.com
there is a product from ACER called travelpad but there s no TM for it
what should i do? TM the name for all purposes? how can i do that?i m in athens greece thank you
i posted this message here cause its the same subject

 

[timechange.com]

You can file for a TM in Greece, if it's faster and cheaper. Here in the US, filing online for a federal trademark is easy but also a gamble. Total cost about $300; waiting period from 9months (fast) to more than 1 year.

 

[RON2]

Originally posted by 2003
You can file for a TM in Greece, if it's faster and cheaper. Here in the US, filing online for a federal trademark is easy but also a gamble. Total cost about $300; waiting period from 9months (fast) to more than 1 year.

TC, where can I find more info on how to do this?

 

[charles]

You can find the answers on how to file a US Trademark in Charles' Primer of Online Media Law, available for a limited time FREE to MEMBERS of this board. (See separate thread on this forum.) If you're interested, please just drop me a PM with your full name, address, phone number and email and I'll send a user name and password. Offer closes upon notice given in this forum.

 

[jberryhill]

"there is a product from ACER called travelpad but there s no TM for it"

Ummm... if someone is selling a product called "travelpad" then they most likely DO have a trademark if they are conducting these sales in a state of the US, or in any other jurisdiction recognized common law trademarks or their equivalent.

I've given this sermon enough times already, so I'll end that one there.

"TM the name for all purposes? how can i do that?"

I'm not familiar with Greek trademark law. In the United States, you can obtain protection for those purposes for which you are using the mark in commerce.

There is not some government office in the US that hands out some weird kind of right to stop others from using alphanumeric sequences as an abstract proposition.

"So you see, inserting a lawyer into your transaction can even insulate you from a claim of bad faith. "

...or sometimes not...

http://www.dnforum.com/showthread.php?s=&threadid=19561
- the Respondent’s bad faith in using the Domain Name is demonstrated by the offer to sell the Domain Name for a sum (50,000 U.S.$) in excess of out of pocket costs directly related to the Domain Name, made by the Respondent’s lawyer by the letter dated July 27, 2000.

There are a couple of other UDRP decisions where the panelists are pretty much immune to the inadmissibility of settlement negotiations.

In fact, it is important to remember that in the grandaddy of the domain disputes (aside from mtv.com) - panavision.com - the vaunted $13,000 offer was made as a settlement proposal by Toeppen. The website at panavision.com had pictures of the city of Pana, Illinois. That kind of contrived "fair use" is the sort of thing that sets my eyes to rolling, including when it gets tossed around here.

Even under the ACPA, it is not at all an expressly resolved issue whether the "offer to sell" trumps Federal Rules of Evidence 408.

This whole issue is why domain registrants get emails or letters that say, "I like your domain name, is it for sale?" with no mention of a trademark, instead of, "I like your domain name, and am offering you X for it."

The TM owner has two options - try to induce an offer to sell, so that the offer can be used as "bad faith" evidence, or assert the trademark. But if they first offer to buy, then some UDRP panelists will consider an agreement to be simply an agreement to a sale proposal that originated with the complainant. Similarly, if they assert the trademark, then a response might be considered an inadmissible settlement proposal.

That's why you'll typically see, "Can you let me know if you would transfer it to me?", "Is it for sale?", "How much are you selling it for?" etc.

The last time I bought a car directly from the owner was after I blew the engine in my VW bus and was stuck in a small town in Utah with no transportation. One of the people I knew out there had a 1976 International Harvester Scout that seemed to be just about what I needed. So I said, "I'd give you $500 for that Scout"

He said, "I'd sell it for $700"

"600?"

"Deal."

But if I asked him, "I like your car. Would you consider transferring it to me?", he probably would have just looked at me like there was something wrong with me.