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Can I use trademark name after it was abandoned?

Discussion in 'Legal Issues' started by dscurlock, Sep 21, 2017.

  1. #1
    I was doing a trademark search on the name that I am interested.
    It is listed on the trademark site as listed below:

    ABANDONED - FAILURE TO RESPOND OR LATE RESPONSE

    If I should use this brand/domain/name, etc....
    What happens if they should renew their trademark later?
    SEMrush
     
    dscurlock, Sep 21, 2017 IP
    SEMrush
  2. PASnow

    PASnow Peon

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    #2
    Might wanna speak to a trademark attorney before moving ahead with it. Per this link, they have 6 months to appeal: https://www.uspto.gov/trademarks-application-process/abandoned-applications After that however who knows where it stands.
     
    PASnow, Sep 22, 2017 IP
  3. dscurlock

    dscurlock Prominent Member

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    #3
    They abandoned their trademark in 2009 or did not renew, and I see no evidence that they are maintaining
    their trademark online, or even selling their product, so I think I am pretty safe....

    either way, they failed to protect their trademark by obtaining the domain...
    and come hell or high water, they are not getting it now, or ever....

    personally, I think they gave up, and walked away in 2009....
     
    dscurlock, Sep 22, 2017 IP
  4. mikebvm

    mikebvm Member

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    #4
    It sounds like you're good to go. As with all legal things, it really comes down to if you think they'll sue you. Think these people will sue you?
     
    mikebvm, Sep 25, 2017 IP
  5. dscurlock

    dscurlock Prominent Member

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    #5
    No, and if they tried, I dont think they would have a case; From what I understand, the trademark holder
    has to show they have maintained their trademark after it expires (for a period of time) and I see no evidence of that since they
    let the trademark expire approx 8 years ago, so I think they gave up, walked way, died, or other....
     
    dscurlock, Sep 25, 2017 IP
  6. mikebvm

    mikebvm Member

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    #6
    That is my understanding as well. An unused trademark is a surrendered trademark, if I understand correctly. 8 years is a long time. I can't imagine them 1) suing. 2) winning.

    Not a lawyer, of course.
     
    mikebvm, Sep 25, 2017 IP
  7. dscurlock

    dscurlock Prominent Member

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    #7
    I just do not understand what would happen if they decided to
    pick up their trademark again, even though, I think not likely....
    and I doubt they would have a case then either since they let
    their trademark go without maintaining it for a period of time....

    I do not think I am going to lose any sleep over this...
     
    dscurlock, Sep 25, 2017 IP
  8. mikebvm

    mikebvm Member

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    #8
    Sounds like it is your trademark now! It isn't theirs to pick up again!
     
    mikebvm, Sep 25, 2017 IP
  9. dscurlock

    dscurlock Prominent Member

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    #9
    not quite sure about that, if trademarks were
    automatic, then why even have to file for one...?

    I can call myself whatever LLC, but that does
    not really matter until I register the LLC....

    Either way, I have the upper hand at this point, anyone
    serious enough to maintain their trademark would have already
    gotten the domain, or maybe they did and let it go, do not really know....
     
    dscurlock, Sep 25, 2017 IP
  10. jrbiz

    jrbiz Illustrious Member

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    #10
    Actually, you cannot call yourself an LLC or an Inc, unless you have actually taken the legal steps to become one (in the U.S., anyway.) Going back to the TM issue: there are two different ways to trademark: one is to simply put a TM after any word or phrase that you wish to trademark and you are making a claim on that trademark. Once you have done that for two years, you may apply for a Registered (R) trademark with the USPTO.
     
    jrbiz, Sep 26, 2017 IP
  11. dscurlock

    dscurlock Prominent Member

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    #11
    It looks like there is an open trademark, not sure why this did not show up the other day.
    We both use the same wording, however, he uses 3 words while I use 2 words, not only that,
    his trademark describes offering fitness training ie: weight lifting, in house services, and
    he sells coffee mugs on his facebook page; I do not offer or sell "fitness training services"
    nor do I sell personalized coffee mugs; We maybe in a similar health niche, but I do
    sell "fitness training" nor do I teach any type of in fitness classes, in other words, he
    is a personal fitness trainer ie: gym membership, and I am not, nor do I sell memberships.

    If he cared so much about his "trademark" maybe he should have bought the domain,
    or maybe he could not afford the domain, needless to say, I have the domain....

    Lets just use an example:

    Lets just say he has:
    TheFacebook(dot)com

    and I have:
    Facebook(dot)com

    Besides us not selling the same services, then would
    the wording in the trademark name make a difference, after all,
    I guess he could have attached multiple names to his trade
    mark in order to cover an instance like this, but he did not...

    The description of his mark is very poor one liner as it is not
    really that descriptive; it only says commerce, and does not say
    anything about him selling his services online ie: ecommerce....

    other then the similar name we use, it appears the
    difference between me the other other party is night/day...
     
    Last edited: Sep 29, 2017
    dscurlock, Sep 29, 2017 IP
  12. qwikad.com

    qwikad.com Illustrious Member Affiliate Manager

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    #12
    Personally, I'd avoid all this sh*t altogether. Just get a domain name that has nothing to do with anybody's trademark and you'll sleep well at night. It may seem like a possibility to you now, but you do not know what ugly, wild beast you can awake in those people in the future.
     
    Last edited: Sep 30, 2017
    qwikad.com, Sep 30, 2017 IP
    jrbiz likes this.
  13. dscurlock

    dscurlock Prominent Member

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    #13
    It is not easy coming up with a brand name these days, much less a brand name + domain,
    so I see where you are coming from, this is not some multi million dollar corporation like
    google, this guy is a fitness trainer, and is a working guy just like anyone else.

    I can somewhat tell by doing some research, and whoever owns the trademark has it
    for no real rhyme or reason; he does not own either the 2 word domain (which I own),
    nor does he own the 3 word domain which I think is forsale, and seems to be very
    disorganized; If he was serious about his trademark, then he should have bought
    the domains rather then letting someone else buy them...

    and so what we are using similar names, happens all the time, however, we
    are selling two difference services, his offline, mine online, and completely different...

    Is it a risk, sure, but since he obviously was not interested in the
    domains, then he would shell out far more money for some lawsuit
    he may or may not win, and right now, I doubt he would win...

    There is another thing I noticed: his mark is listed as: Service Mark,
    which means he is obviously selling a service. Now the question is,
    would I be able to do a trademark, since I am offering a product?

    I already have the domain, so that is water already under the bridge....
    so I may sit on the domain for a bit, or even go up to the attys office
    and seek their legal advice, and show them what I have found so far....
     
    Last edited: Sep 30, 2017
    dscurlock, Sep 30, 2017 IP
  14. Pamela Turns

    Pamela Turns Active Member

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    #14
    Abandoning a trademark is more than just letting its registration expire, which means it is not being used any more, and the company or any other organization associated with the mark has disappeared. That is the fact that needs discussion and research before a lawyer can give an opinion. There are quite a few good trademark lawyers that can review these facts with you.
     
    Pamela Turns, Oct 2, 2017 IP
  15. dscurlock

    dscurlock Prominent Member

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    #15
    Looks like I am in a hole; I have in fact found a live service mark record, and our niche is similar,
    however, not exact, even being similar would disqualify me from getting a trademark,
    nor would I be able to use the domain, unless I take a calculated risk he would not be able to
    afford some type of trademark litigation case, which can get very costly from what I understand...

    So far I have multiple calls for atty's to call me back, so far nothing...
    I guess that says alot when a TM atty will not even return your call....
     
    dscurlock, Oct 2, 2017 IP