Trademark & Domain questions

[Mutt]

question 1) if a site owner doesn't trademark his site's name can he come after you if you register and run a site with a similar name? example - if GFY.com hasn't been trademarked can I legally register and run a site named GFYChat.com?

question 2) if somebody HAS trademarked their domain name but abandons the trademark can you register the abandoned trademark and go after the person/company who abandoned the trademark?

thanks - the first one is important to me - the second one i was just curious about because I saw that a very famous adult domain trademark had been abandoned by its owner.

[XPays]

you can always check with an IP lawyer, but in my layman opinion - Yes a site owner can come after you even if they have not filed a tm. service marks and the like vest over time with use regardless of whether or not they are filed.

question 2- i think that depends if the mark is live or dead. technically though a mark ceases if the owner or assignee officially goes out of business and the mark is unused. need a lawyer for a better answer on question 2 fyi.

[DBS.US]

Buy the name and sell it on ebay.

[Ron Bennett]

Originally Posted by Mutt

question 1) if a site owner doesn't trademark his site's name can he come after you if you register and run a site with a similar name? example - if GFY.com hasn't been trademarked can I legally register and run a site named GFYChat.com?

Yes, as a "common law" mark ... but will have limited recourse in regards to protecting it compared to a federally registered mark.

Originally Posted by Mutt

question 2) if somebody HAS trademarked their domain name but abandons the trademark can you register the abandoned trademark and go after the person/company who abandoned the trademark?

Such statuses as "canceled", "expired", "abandoned", etc refer to the registration NOT the actual mark itself...

One can NOT rely on such statuses alone in determining whether a mark is still in force or not; in use somewhere in commerce as a common law mark and/or registered in one or more states (yes, many, if not all?, have their own TM registries), in other countries, etc.

On a related note, it's sometimes possible for an "abandoned" mark to be "revived" at some later date; statuses that appear absolute are not. TM law is among the most arcane there is.

With all that said, if you see a domain that is generic in nature that you like and is available, registering it may work ok fine - just because a TM(s) exists anywhere doesn't preclude one from legitimately registering the domain...

Owning a mark for something does NOT automatically give that TM owner rights to the similar-looking domain...

And conversely, a domain owner, despite the existance of similar registered and/or common law mark(s) STILL MAY have legitimate rights to register / keep / utlilize the domain to some degree, if not completely.

Hope this helps.

Ron

[Mutt]

two good answers - thanks guys