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  1. #1
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    Feb 2012
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    Default Can You Get Rights to Domain Name by Registering a Dead Trademark

    I'll make this short and sweet. I'd like to get a domain name from a company that hasn't used the name in about 12 years. knowing if I contact them with interest in purchasing it, they would come back with an inflated price I could never afford. The domain name was trademarked but has been in a dead state for about 10 years. the owner has the name forwarded to another defunct company which has been in effect for 12 years. is it possible to register that domain name as a trade mark? what rights would that give the new owner of said trademark? is this even possible?

  2. #2
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    Default Re: Registering a Dead Trademark

    Not unless the domain name is the actual trademark and that means including the .com whatever.
    additionally, you cannot register a mark until you use it in commerce.

  3. #3
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    Default Re: Registering a Dead Trademark

    Quote Quoting nurv
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    is it possible to register that domain name as a trade mark?
    Yes, although that does not of itself mean tht you'll be able to get the domain name. Also, if the mark remains in use your registration will be subject to potential challenge even if the registered mark has lapsed.
    Quote Quoting nurv
    what rights would that give the new owner of said trademark? is this even possible?
    It would give you the exclusive right to use your mark in trade, within the scope of the uses for which you registered the mark.
    Quote Quoting jk
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    Not unless the domain name is the actual trademark and that means including the .com whatever.
    I'm not sure where you're going with that. You can register and protect a mark, including its use in URLs, even if you don't include the tld in the domain name. Similarly, including the tld in the mark won't allow you to sidestep a trademark held by somebody whose mark does not include the TLD (Disney, for example, need not register new marks for "disney.com", "disney.net", etc., in order to assert its trademark rights against a user of those domain names).
    Quote Quoting jk
    additionally, you cannot register a mark until you use it in commerce.
    No argument there.

    Additionally, provisions to protect trademark holders from cybersquatting don't allow them to take domain names that were registered prior to their registration of the mark - it's not cybersquatting if you own the domain name before the mark is registered. Also, some domain names can potentially be used by more than one mark holder, e.g., if they're in different areas of trade.

  4. #4
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    Default Re: Registering a Dead Trademark

    I'm not sure where you're going with that. You can register and protect a mark, including its use in URLs, even if you don't include the tld in the domain name. Similarly, including the tld in the mark won't allow you to sidestep a trademark held by somebody whose mark does not include the TLD (Disney, for example, need not register new marks for "disney.com", "disney.net", etc., in order to assert its trademark rights against a user of those domain names).
    the actual domain name includes a .com, .biz, . whatever. Unless the mark actually includes that . whatever, you cannot register a domain name as a TM/

    an example: expedia.com. The name of their business is not expedia. It is expedia.com. due to that, they can register expedia.com as a TM. Inversely, a company that does not have a .whatever attached to their identifier cannot register their name with the .whatever as a TM. After all, the TM is an identifier of the business or product. If you do not use the .whatever as part of the identifier in commerce, then there is no valid basis for acceptance of the registration.

    the use of the disney part of the domain name is a totally different issue but realistically, Disney has taken improper actions to defend their claimed rights so discussing using Disney as an example is not the best of choices. They have been known to threaten to sue anybody that uses their marks, even if the use is legal.




    btw, there is no active TM on disney.com. although they did apparently hold it for some time.

  5. #5
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    Default Re: Registering a Dead Trademark

    I did not have the impression that the OP was planning on registering "example.com" instead of "example" - that is, I seem him as asking about the second-level domain name - but you may be right. Adding the ".com" to your trademark is limiting, is largely an artifact of early-Internet thinking, and would limit (or eliminate) a company's ability to defend the second-level name as registered with another tld.

  6. #6
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    Default Re: Registering a Dead Trademark

    Mr. Knowitall;753144]I did not have the impression that the OP was planning on registering "example.com" instead of "example"
    -While I likely read it too literally, I was still simply intending to educate the OP as to the statement I made. I have seen many questions similar that benefited from the clarification.


    that is, I seem him as asking about the second-level domain name - but you may be right. Adding the ".com" to your trademark is limiting, is largely an artifact of early-Internet thinking, and would limit (or eliminate) a company's ability to defend the second-level name as registered with another tld.
    you are most likely correct. I simply wanted to make a point that he could not register the .whatever as TM unless it was actually part of the identifier of his business or product.

    I probably should not have been so short in my response so as to avoid the confusion it may have caused. I'll try to do better, I promise

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