TM question

[Scott]

I own a domain that has been recently trademarked by someone other than myself and I now have the opportunity to purchase the .com of this name from a domainer which was registered may years earlier.

Does anyone see any legal issues if I do not conflict with the mark holders business?

Thanks for your time.

 

[Dave Zan]

That's not going to stop the other party from taking legal action, if that's what
you mean. But it's another story for that person/group to win.

 

[DNQuest.com]

Are you talking about registered TM? If so, chances are they may have attained TM status before they filed. Also, if you buy the domain and te TM holder comes after you, some panelists have considered a transferred domain as a new registration and will not look at prior ownership. Thus, they would rule the domain was registered after the TM was established.

If you purchase the domain, if there is a website on it now, purchase the website too and draw up a contract staing you are purchasing the domain, website, trademarks and all goodwill associated with the site. This would establish a "continuation" of ownership instead of new registration.

If it is a parking page, then there is no goodwill.

 

[kiviniar]

depends in which country u stay...ha ha ha

 

[Scott]

Are you talking about registered TM? If so, chances are they may have attained TM status before they filed. Also, if you buy the domain and te TM holder comes after you, some panelists have considered a transferred domain as a new registration and will not look at prior ownership. Thus, they would rule the domain was registered after the TM was established.

If you purchase the domain, if there is a website on it now, purchase the website too and draw up a contract staing you are purchasing the domain, website, trademarks and all goodwill associated with the site. This would establish a "continuation" of ownership instead of new registration.

If it is a parking page, then there is no goodwill.

Let me try to put this in better focus.

I registered ****.net back in 2002 was never developed and parked

The **** wordmark was registered for U.S. TM in January 2006 by party B

I recently got the opportunity to purchase the ****.com which was originally registered in 97' never developed and parked by party C.

So, since party B has TM'ed the name, registering any **** tld will put myself in harms way even though I have the ****.net already?

Thanks for all your input :-D

 

[DNQuest.com]

That could be correct as stated...

As I also stated, they registered in 2006, but when was "first usage" of the TM (that would be on the application unless it is filed as future use)?

Just because you have a different extension does not give you rights to another domain. Each domain would be consided seperately.