Old Trademarks?

[James]

So 3 years ago I purchased two generic names via DROP, needless to say I did not search too see if their were trademarks on the names as in my eyes they were very generic names at the time.

Now I was thinking about developing one and I notice that one has a old trademark on the name from 8.5 years ago. It seems they closed down the business ect and have moved onto new things 4-5 years ago after looking at Linkedin for the old employees/ founders ect.

Now I remember some one saying you can buy a trademark from some one if its expired or do I just wait for it to expire, I believe this was at a DN Trade meetup?

Reason is this domain in question gets around 1,000 unique's a month organically already and I have a landing page on it ect.

My concern is if I develop the name and it is successful the old founders will come out of the woodwork and be like hey we want some money ect...

What to do with something like this, this is the annoying thing about old trademarks the old owners obviously do not care about the name any more but they linger on for 10 + years!!

What to do with something like this, just move onto a new domain...

 

[Shane]

I haven't gone through this process myself, but it seems relatively straightforward and inexpensive.

http://www.ipaustralia.gov.au/get-t.../examination-process/non-use-of-a-trade-mark/

 

[Alex]

Are you sure the trademark is in a category that effects your website plans? For peace of mind would contact a legal professional or contact the people who have the trademark. Kind Regards, Alex

 

[James]

Are you sure the trademark is in a category that effects your website plans? For peace of mind would contact a legal professional or contact the people who have the trademark. Kind Regards, Alex

Yes it is because they have the trademark for the .com.au variation of the name and also the exact match term, also the market I want in on.

Thanks to Shane for the link above this is exactly what I need.

 

[findtim]

shanes link is good but also "it brings them out of the woodwork" as it brings it to their attention.

i'm currently struggling with this decision myself right now, same situation, good domain, same vertical, same trademark categories, same no current business that still owns the trademark ( bastards have it for another 3 years yet !!! )

so unfortunately i have nothing to offer except an interest and hope someone has previously solved it.

i decided not to go the "removal for non use" right now, as i need more knowledge and maybe a few grand to get maybe coopers to do it for me but if it doesn't work then i'm out of pocket and have a dud domain which i have already invested into.

tim

ps: i've own the domain for over 10 years. the difference in their trademark and my domain is i have an "s" at the end which may be touch and go??

 

[Cooper Mills DomainLawyer]

So 3 years ago I purchased two generic names via DROP, needless to say I did not search too see if their were trademarks on the names as in my eyes they were very generic names at the time.

Now I was thinking about developing one and I notice that one has a old trademark on the name from 8.5 years ago. It seems they closed down the business ect and have moved onto new things 4-5 years ago after looking at Linkedin for the old employees/ founders ect.

Now I remember some one saying you can buy a trademark from some one if its expired or do I just wait for it to expire, I believe this was at a DN Trade meetup?

Reason is this domain in question gets around 1,000 unique's a month organically already and I have a landing page on it ect.

My concern is if I develop the name and it is successful the old founders will come out of the woodwork and be like hey we want some money ect...

What to do with something like this, this is the annoying thing about old trademarks the old owners obviously do not care about the name any more but they linger on for 10 + years!!

What to do with something like this, just move onto a new domain...

Hi James

You have a couple of options:
(a) offer to buy the trademark;or
(b) file a non use application and have the trademark removed from the register if it is no longer being used(there are some requirements but we can discuss those if you PM me)

Cheers
Erhan

 

[Alex]

Just touching on this. Though I am not a lawyer I have filed for a few trademarks. One is actually in Opposition. I think the Class and indicated subcategory become very important.

If my understanding is correct two trademarks in the same class can be awarded, but with different subcategories. Cooper Mills would you be able to indicate if this is true or false?

I think most domineers (unless physically selling something) would apply under advertising. If the opposition is say a retailer trading under the name w/ or without a trademark as long as you can squeeze in your own trademark in a class / subcategory appropriate to what you are doing then it might resolve some concerns about developing a domain w/ trademark issues.

 

[Simon Johnson]

We have bought trademarks before, for this very reason. Works well.

 

[findtim]

I think most domineers (unless physically selling something) would apply under advertising. If the opposition is say a retailer trading under the name w/ or without a trademark as long as you can squeeze in your own trademark in a class / subcategory appropriate to what you are doing then it might resolve some concerns about developing a domain w/ trademark issues.

reallyyyyyyyyyyyyyyyy fine line you tread on.

simons comment I think is probably more in tune, meaning that he has bought existing trademarks as they have been already solved ( correct me if I am wrong simon )

you could waste a lot of money if you don't get the right advice before you start.

NOTE: I know nothing about this............ I am just personally in the current review process for myself and that's all.

tim

 

[findtim]

so james 3 years on, what happened?
what is happening for me now is waiting for it to expire but now i own the "s" version and the "non s" version as it dropped last year !
i think i still will use the s version simply because it rolls of the tongue easier.
tim

 

[Data Glasses]

Worth noting there are different classes