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BizIPEsq.
BizIPEsq., Attorney
Category: Intellectual Property Law
Satisfied Customers: 996
Experience:  I am a tech attorney and I represent clients with technology, internet and intellectual property matters
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this is a theoretical question. I do not want to give specific

Resolved Question:

this is a theoretical question. I do not want to give specific details. If I have a trademark registered in class x for domain name subject.com am I allowed to use my domain name subject.com for whatever classes I like, or only class x?
Submitted: 3 years ago.
Category: Intellectual Property Law
Expert:  BizIPEsq. replied 3 years ago.

BizIPEsq. :

Hello, I will be assisting you

BizIPEsq. :

You have to use the trademark at least in class x. You may use the mark in other categories as well but the mark would generally not be protected under trademark law because the use is outside the registered use

BizIPEsq. :

In conclusion, one is allowed to use the mark in other uses just notes that there will not be trademark protection without registration in those classes.

BizIPEsq. :

Thank you for allowing me to assist you!

Customer: replied 3 years ago.
What happens if someone else is using the trade mark in class y? Even though you have the domain name and are registered in class x? Can they stop you using your trademark unprotected in class y? Would they have pre existing rights if they were doing class y first?
Expert:  BizIPEsq. replied 3 years ago.
Generally speaking, if someone has a trademark in class y then they can preclude you from your class x registered mark in their class y.

If you have been operating in class y before they registered their mark then may have common law trademark rights or otherwise you may continue to operate as trademark law generally gives priority to prior use over the an after-the-fact registered trademark. This is a factual analysis that a court/jury would make if a case ever comes to court.

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Customer: replied 3 years ago.
And if they don't have a trademark registered in class y? Sorry but I have got to know for sure.
Expert:  BizIPEsq. replied 3 years ago.

If they don't have a trademark in class Y then matters become somewhat murky and require a factual examination by a court/jury whether they have might have usage rights arising under common law trademark rights. Typically common law trademark protection extend intra-state while Federal trademark protection extends nationwide.

Customer: replied 3 years ago.
But if you stay out of class y completely, and class x, which might not be that lucrative, and just do some different but lucrative business in class Z, they you are in the clear, avoiding their class y and your unprofitable class x, but still free to make profits in class Z? I think I know what you answer is going to be. You are a good lawyer and good at explaining things, but I have made mistakes before. Class Z, unrelated to x or y would be OK wouldn't it?
Expert:  BizIPEsq. replied 3 years ago.
Why not trademark also in class Z? You can have a trademark in more than one class... Especially if you are conducting interstate commerce in that class that you would qualify.
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