|Expert advice - Domain is available but a DEAD trademark/patent found|
should we go ahead and buy this .COM?
We were planning for a company name. We came across a very good name for naming our business. There is a .COM available for this name which is up for sale for more then 1500 US$.
We also did a trademark/patent search for this word on [uspto.gov...] and we found following results.
I will use the word "webmasterworld" as an example here.
We want to name our company as WebMasterworld Solutions but on uspto.gov "WebMasterworld" word appears to be a DEAD trademark/patent.
Past history of Webmasterworld.
Webmasterworld was a security appliance company which was acquired by another company in same niche more then 5 years ago.
This is additional information for same word from uspto.gov
Registration Number: (NOT AVAILABLE)
Standard Character claim: No
Current Status: Abandoned: No Statement of Use filed after Notice of Allowance was issued.
Transformed into a National Application: No
Registration Date: (DATE NOT AVAILABLE)
Date of Status: 2005-05-28
Filing Date: 2001-12-26
( i have edited the dates, which will not reveal actual information)
Should we go ahead and buy the domain name webmasterworld.com ? As specified above this domain name will cost us more then 1500 US$ morever, we will also incurr a huge cost on registering this company in our country, print media, web development, etc.
I am looking for expert advice on same before we go ahead, we do not want to get into any legal problems in future.
I have also emailed the current company which acquired webmasterworld but have not yet received any response from them.
|I am looking for expert advice on same before we go ahead |
You ought retain the services of an experienced attorney in your Country.
There is no expert advice available in this forum.
The best you can get here is some opinions, NOT LEGAL ADVICE. See an attorney, one who specializes in International Trademark and Patent law.
If the trademark is identified as abandoned, you should be able to take it over.
The approach that I would look for would be.
1) Agree a price in principle for the domain name conditional on successfully registering the trademark. I would think a deposit will be required.
2) Register/reactivate the trademark.
3) Conclude the deal on the domain name.
Ideally, you should use a lawyer for all of this, however, if the cost of the domain name is only $1500, then it may not be cost-efficient.
The following is from the Domain Forum Charter. It explains the futility and risks of posting trademark issue threads:
TRADEMARKS AND LEGAL ADVICE:
- Posting domain name details is a violation of the Charter of this forum, yet, such details are what competent legal counsel would insist on knowing before offering advice.
- There are hundreds of jurisdictions, each with their own variation of intellectual property and trademark law.
- Statements made in public forums can and will be used against their maker.
- Trademark holders can search domain forums for threads triggered by their communications. Declaring "I was just contacted by a lawyer about a domain . . " can signal "This thread was started by the person you just called." See #3.
- Money judgments for cybersquatting, trademark violations and other intellectual property wrongs can bankrupt people and companies.
- Threads that involve personal legal or trademark issues inevitably lead to the same conclusion: "We are neither qualified nor sufficiently informed to offer competent legal advice. Talk to a lawyer".
For these and other good reasons, from this point forward [webmasterworld.com], the Domain Forum will no longer host threads related to any individual's or any company's domain trademark issues. The only place to seek opinions concerning specific legal matters, such as the ability of any party to assert trademark rights or defend against such a claim, is a law office in the proper jurisdiction.
Generalized discussions about legal issues not specific to a member's circumstances, discussions about finding or using authoritative government sources (USPTO.gov, Patent.gov.uk, WIPO, etc.), or discussions concerning significant WIPO, ICANN or court decision are proper material for discussion.
If someone posts a legal issue thread, wherein they state that they have been contacted by legal counsel for "the other side" the only advice that should be given is to strongly encourage the person to stop posting details in public forums and to immediately seek a private consultation with a lawyer.
Hey, if it's going to cost you huge cost, wouldn't it be prudent to dot your i's and cross your t's (ie. hire legal help) before proceeding?
tangor, I am only seeking opinions what should we do to avoid any problems in future.
kaled, i have contacted some third parties who do trademark/patent registration work from U.S., according to them if the trademark appears abondoned there is a possibility that we may or may not get the same registered on our name.
This process will take around 6 months of time, hence I am seeking some advice from experienced/knowledgeable people here.
Webwork, thank you for guiding on forum charter, we never knew this legal matters should not be posted in public forums, will take care about same henceforth, hence I have tried best not to post any details which in any case would reveal any of the parties information.
Can someone further assist me where to take advice on this matter ?
We have tried our best to get information about IP lawyers in our country (India), but was not able to do so.
A Private mail from webmasterworld on this shall be helpful.
Thank You again, for your replies.
If you read the opinions/rulings issued by the WIPO and NAF arbitration panels you will quickly learn the names of lawyers that routinely represent people/companies confronting domain name intellectual property issues, such as John Berryhill and Ari Goldberger.
Was not able to get the right information, but anyways we have dropped the idea to acquire the domain in question.