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GoDaddy customer service : Suggest I go GoDaddy?? Interesting situation with "Dead" trademark

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I own the a domain name I'll call CoffeeWorld.com for this discussion. When I bought it last year, I checked the trademarks and there was a trademark record for "Coffee World" that had a status of "DEAD", canceled in 2004.

HOWEVER, there still was, and still currently is, the website CoffeeWorld.org that has information about coffee and publishes a physical magazine called Coffee World. For some reason they let their trademark expire.

So, even though there is an active magazine called Coffee World, do I have a trademark issue with CoffeeWorld.com considering they let their trademark expire ?

Could I start my own informational site with my domain name and even go so far as file and get a trademark for Coffee World?.

Thanks! This is a very strange situation...

Comments (23)

My dog's license expired last month.

My dog is doing just fine...

Comment #1

Just because they "abandoned" does not mean that they gave up their "right" to it... see the USPATO's definition here: http://www.uspto.gov/web/offices/com...scriptst_z.htm and again here: http://www.uspto.gov/web/trademarks/workflow/keep.htm.

Having giving you that info however... you could choose to file for a TM and if unapposed receive one... then use it and see what happens....your choice...

If you look up the "dead" tm you will find more info about the original TM holder not giving up their rights just because they abandoned the TM.. you have to click on one of the links in the desc. fields...

Hope this helped.....

OldRatRacer..

Comment #2

Thanks, I'll read those links.

Further Question #1: If I file for the trademark (after making a site of course), would they most likely be able to successfully oppose it since they publish a magazine with that name?.

Further Question #2: Here is their class and description: "(CANCELLED) IC 016. US 038. G & S: magazines, brochures and pamphlets dealing with topics centered on [subject matter]. " That does not say anything about a web site. Trademarks are pretty specific I think. It would seem a web site of mine and a magazine of theirs would not conflict, right?.

Further Question #3: Since the trademark was in DEAD status (understanding your comments about that status) when I purchased the .com, would ICANN give me leeway and not take the domain name from me if these guys challenged me?..

Comment #3

You are welcome.

Even though my dog's government registration has expired, it can still bite you.

The existence of my dog is not determined by whether my dog's registration is up to date.

Is that clear enough?..

Comment #4

Well, the concept is clear, if it were a dog. Any dog can bite.

The question is whether or not the magazine has a legal leg to stand on. Or, to keep with your analogy, does it have four legs to stand on...

Comment #5

If the magazine has been holding the name out as a trademark, then yes, they do. The fact they trademarked the name one, let it expire, but continue using the name seems to me that they still have the right to that TM. If you want to compete with it, file your own TM with the same name. You then would have more of an interesting legal fight...

Comment #6

I do know one thing: they aren't very bright to let both the trademark and the .com get away from them!..

Comment #7

Hi slobizman,.

While this maybe true, it is not the case! Good luck!..

Comment #8

Ok, I guess we need to hit someone in between the eyes.....

The TM still exsists..... but the registration does not. See the difference???????.

You do not file for a TM, you file to register your TM (or future use of a TM, in case someone wants to get too technical). So it does not matter if the registration has lasped or not, if the TM holder is still using his TM, he still has righs to the TM.

If I may ask, is this about a magazine at all?..

Comment #9

From what I understand you can have the trademark "abandoned". It costs a fair amount of money to do this. However if successful then you become the trademark holder. I actually inherited ColecoVision TM in this manner. It's a very odd story. I owned the .com and Hasbro basically abandoned the tm.

Eventually they did. However since I owned the .com and was actively using the tm for commerce (I was actually selling Colecovision systems and games still) I was actually in line for the tm due to first use. So they paid me off. :-) I learned a lot from my lawyer in that month...

Comment #10

That had to have been a nice payment to receive...

Comment #11

Awww... have you really met me? Do you mean to suggest that not every person on the planet adores me? I'm heartbroken.

Back on topic, it can also happen that my dog can die before the license expires. TM registrations can outlive actual use of the underlying trademark...

Comment #12

Jberryhill-.

I like you and really enjoy your insight. BUT.... I'm concerned about your dog...

Comment #13

She's looking like she is having the time of her life.....

Comment #14

1. can we repeat your success to other abandoned TM?.

2. from your example, it sounds like the OP can actually steal this TM, am I right?..

Comment #15

I'm sorry this is very unprofessional but that comment was effin harlarious while being drunk...

Comment #16

No, if the company is still using the TM in some way, shape or form, you can't "steal" the TM. Just because the registration lapse, doesn't mean squat in regards to the TM. (IE- John's dog is still alive even though the registration expired).

Also, the OP presented an inaccurate statement in his post, he said the company let the TM expire, they did not, they let the registration of the TM expire. (IE- they didn't pay the moeny to keep the registration update, but the company may feel comfortable they can defend themselves agais anyone wanting to challenge thier TM)...

Comment #17

Thanks everyone. Here's a related question:.

What happens if I buy a domain name and keep it parked. Then, later, someone starts a company or product with that name and get a trademark. Can they get ICANN to make me give it to them?..

Comment #18

In that case, no... they would be reverse hijacking the domain.....

Comment #19

They let their trademark registration with the office you checked with expire. They may have other trademark registrations in other places. If they are still trading while using that mark then they no doubt still have a trademark.

Food for thought....

If a dog were sealed in a box with a radioactive trigger that had a 50% change of paying the license fee would the dog be both licensed and unlicensed at the same time?..

Comment #20

Can we explore this just a little bit more. So, if I have a domain name which whose wording is unused and untrademarked at the time I register it, then I just keep it parked, then someone comes along and creates a company or product with that name and trademarks it, that's "reverse highjacking.".

But what does that mean, legally? Can I challenge their trademark? Will ICANN NOT force me to hand over the name to them because I had it first? Will ICANN even bother checking this?.

And, is there a difference if I merely have the name parked or if it's developed? Shouldn't be since parking names for PPC is a valid business...

Comment #21

Slobizman,.

Your questions go off in fifty different directions. No. If you have had asdf.com since 2000, and I came along in 2005 and started selling ASDF brand dog food, I am perfectly entitled to register a trademark for ASDF in connection with dog food. I will not be able to say that you registered the domain name in bad faith, but there is nothing wrong with my registering my trademark for ASDF dog food.

Now, if you have the name parked at PPC, and those PPC results begin to converge on dog food, then you and I are going to have a problem because your use of the domain name has now changed to infringe my trademark - you weren't using it for dog food prior to my trademark, but now you are...

Comment #22

Yes, discussions often to that; all related though.

Appreciate the detailed answer. it's very clear, except I want to make sure of one thing. You said "Now, if you have the name parked at PPC, and those PPC results begin to converge on dog food, then you and I are going to have a problem..." What if I was always getting dog food ads? A better example would be if the domain were actually descriptive of the ads I receive. For example, if the domain is BowWowDogFood.com and I naturally had always gotten dog food ads that predated the use by the other party, would that then be an infringement?..

Comment #23


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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