Hello. I am not good with all this legal stuff. But I own a website related to electronics and computers that uses adomain.net I actually contacted the owner of the .com domain offering $800 for the domain. His website has nothing at it but the domain is 8 years old. So, after 2 days he replied and said that he was not willing to sell and me using the .net domain was not allowed because he owned the trademark for it. I checked the trademark using the trademark search and found that yes, he did own it but it has the status "DEAD". Does this mean that he can not get me into legal trouble for using the name? If so does it mean I can register the trademark for my own use? Thanks Calum
Thats not the problem, the problem is he owns the trademark and says he is going to sue me. But I checked and the trademark has the status "DEAD" and I am not sure if it still counts and he can still sue me.
PM me the domain names and what he claims to own as a Trademark and I'll have a look for you but it sounds like the guy is full of it.
http://www.uspto.gov/main/glossary/#d Shorthand answer is a "dead" trademark application doesn't mean the party in question no longer has trademark rights to the term/s. While one might forget about their USPTO record, s/he can still have common law trademark rights as long as they're using it in commerce. If my dog isn't licensed, does that mean it's not a dog? Or if it's licensed, then its license eventually expired and I didn't renew it, does it mean it cannot bite your behind? The USPTO is not reflective of whether one doesn't have a trademark for that term or so, although having a registered one has more benefits over common law. So the person you're dealing with can indeed sue you, but winning that is a different story. Incidentally, proactively approaching a trademark holder to sell them the name that bears their mark is a no-no. Unfortunately you learned that the hard way in this case. And before others start chiming here telling you to fight the bully, do consider that no one is really going to help you if push comes to shove. They'll tell you based on what they either know or believe, but that's just about it and it isn't necessarily accurate. You don't have to take my word for it either, though....except to seek out an attorney with real-world experience in this matter.
Dave Zan also thanks for helping aswell. I am not going to reply to his thread, if he does take it further then I can use all the information here anyway, and it's status is "dead" which is good. Thanks Dave Zan and mcfox for your great help, the issue is sorted now Rep left for both of you.
Just to be clear, I am not telling you to fight this. Just laying out a reasonable strategy for this situation. Everybody telling calum that he made a mistake by trying to sell the domain to the TM holder should read the first post again. He didn't try to sell his domain that he was using to the trademark holder. He tried to buy the inactive domain from the guy that has the trademark. That is a different game altogether. Now, as to what the other guy can do to you, Dave is essentially right. However, I would do a little more research before I just handed the domain over. Since I don't know the domains in question, I'll explain what I mean. Trademark status is not just given to whomever uses a term first. There are other implications. For example you must have intent to use the term in business. His 8 year old domain has nothing on it. Do you know if there is a physical business that he has that uses the term? If not, then he likely would not win a lawsuit. One does not have to be actively using a term in order to keep trademark status, but at the same time trademark law is not set up so that you can sit on a term forever if you don't use it. After eight years with the domain (and however long since he registered the trademark) and he has still not done anything he may have a hard time showing intent. However, if there is a physical business actively using the mark then it doesn't matter that he has done nothing with the website. Next thing to look at is what he has the trademark for. If his store is a bakery and you are selling electronics then you are not infringing on his trademark (unless the mark is famous, but I am guessing not if he hasn't bothered to build the site... however, it's hard to tell without knowing what the mark is). The next thing to look at tis whether his mark is sustainable. One would assume the trademark office would not approve a mark for registration if it did not comply with the rules, but it happens all the time (though still statistically insignificant). Those guys are over-worked and don't always fully understand the industry in which they are approving marks for. If the name were electronicsshop then it would not be a sustainable trademark as it is merely descriptive. When trying to determine if this is the case you must be very careful. Some names that seem descriptive are not deemed to be so (RadioShack for example). To me that seems a very descriptive name. To the courts it is fanciful and therefore protectable (that and the famousness of it). The next thing to look at is geographic location. It is possible for two companies to use the same name in different locations and not infringe on each other's trademarks. This is a stretch since you started yours so long after his. Then, if you think you can stand on any of those arguments see a lawyer to determine seek a IP lawyer to get a legal opinion. Question for you, are you talking about name in your sig? If so I think there is good news for you.