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Wilton A. Person
Wilton A. Person, Lawyer
Category: Intellectual Property Law
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Experience:  MBA, Experienced and Knowledgeable in Intellectual Property Law
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Does ownership of a registered tradeXXXXX XXXXXke GoodGames

Customer Question

Does ownership of a registered tradeXXXXX XXXXXke GoodGames (without the dot) mean you can claim the new tld good.games (with the dot) when it is released next year please?
Submitted: 3 years ago.
Category: Intellectual Property Law
Expert:  Wendy-Mod replied 3 years ago.
Hello,

I'm Wendy, and I’m a moderator for this Legal topic.

We have been working with our professionals to try to help you with your question. Sometimes it may take a bit of time to find the right fit.

I was checking to see if you had found an answer or if you still needed assistance from one of our professionals.

Please let me know if you wish to continue waiting or if you would like for us to close your question.

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Customer: replied 3 years ago.
thanks,
yes, I still need help on this and want an answer quite badly.
thanks for your message.

sincerely
Michael Poole
Expert:  Wendy-Mod replied 3 years ago.
Thank you, XXXXX XXXXX continue to look for a professional to assist you. Please let me know if I can be of any further assistance while you wait.

Best,
Wendy
Expert:  Wilton A. Person replied 3 years ago.
Thank you for posting your question. For purposes of trademark law, there is not any legal distinction between the registered trademark or the proposed trademark with a "." between the new words of the name if the same company is the source of the products or services.

There is no real need to make an ownership claim because the trademarks are essentially the same. Owning the initial registration would prevent other from adding minor changes to the trademark. It is not really necessary to file a new trademark registration or be concerned about ownership of such a similar trademark.
Customer: replied 3 years ago.
I would still very much like to be able to claim the domain name as my own though, even with the dot in it. Do you think I could? With legal grounds I mean? Saying I have a right to the domain name more that others because of my trademark?
Expert:  Wilton A. Person replied 3 years ago.
Thank you for your response. If you already have the registration for the initial trademark for your product or services, you would most likely be approved with a registration with a slight modification because you are the same source of the marks. However, you may wish to consult or have a trademark attorney review your application prior to filing.

Domain names are XXXXX XXXXX in terms of ownership so if another party files a domain registration for a similar name, the party would actually own the domain name until you are able to prove infringement or that the other party registered the domain name in bad faith with full knowledge that you were the trademark owner of a similar name. There is not any operation of law that would automatically make a party the owner absent spending the money to actually litigate the matter in federal court or other administrative forum.
Wilton A. Person, Lawyer
Satisfied Customers: 4147
Experience: MBA, Experienced and Knowledgeable in Intellectual Property Law
Wilton A. Person and other Intellectual Property Law Specialists are ready to help you
Customer: replied 3 years ago.
I do not understand the last sentence in your opinion. Please can you re state it?
Expert:  Wilton A. Person replied 3 years ago.
You would not have a viable ownership claim simply because another party registers a domain name is XXXXX XXXXX you want to enforce your rights, you would need to be prepared to file an infringement case.
Customer: replied 3 years ago.
I have another trademark that I think is being infringed by a different existing domain name though, and would like to ask you a different question about it if I may please?
Expert:  Wilton A. Person replied 3 years ago.
Yes, you can ask a new question within this thread.
Customer: replied 3 years ago.
I think this may have timed out because I was thinking about it too long, but will ask it anyway, in the hope you might be willing to answer as before.

I have a trademark ExampleBiz registered for class x (as a hypothetical example).
Someone else has a domain name example.biz operating in class y which they tried to register as a trademark example.biz but they abandoned their trademark application about a month before I started my ExampleBiz application which then succeeded.

Can I now claim the simlar domain name example.biz on the basis of it now
infringing the ExampleBiz registered trademark?
Customer: replied 3 years ago.
I think this may have timed out because I was thinking about it too long, but will ask it anyway, in the hope you might be willing to answer as before.

I have a trademark ExampleBiz registered for class x (as a hypothetical example).
Someone else has a domain name example.biz operating in class y which they tried to register as a trademark example.biz but they abandoned their trademark application about a month before I started my ExampleBiz application which then succeeded.

Can I now claim the simlar domain name example.biz on the basis of it now
infringing the ExampleBiz registered trademark?
Expert:  Wilton A. Person replied 3 years ago.
Thank you for your question. If the domain name is XXXXX XXXXX services or products that are different than your own, there would not be a viable claim for infringement.

If the trademark is used for the same services and products and the person owned the domain name and was using the trademark prior to your use, there may be a trademark infringement claim but it may be this party claiming infringement against your trademark if the party is still using the trademark.

The abandonment of a trademark application does not mean that the party stopped using the trademark, it just means that for whatever reason, the party decided not to proceed with the federal registration.

You may wish to negotiate the purchase of the domain name from the party but if the person was using and still using or even plans to use the trademark for the same services or products in the near future and was using the trademark prior to you, the party would have superior trademark rights despite your federal registration and would be subject to a cancellation action.
Wilton A. Person, Lawyer
Satisfied Customers: 4147
Experience: MBA, Experienced and Knowledgeable in Intellectual Property Law
Wilton A. Person and other Intellectual Property Law Specialists are ready to help you
Customer: replied 3 years ago.
Thank you very much indeed for all of your help so far.
In order for me to begin to feel fully versed in the subject
please may I ask you one more question?
Expert:  Wilton A. Person replied 3 years ago.
You are welcome. Yes, you may ask another question through this thread.
Customer: replied 3 years ago.
Thanks.

With specific reference to the new gtld domain names that are going to flood the web in 2014 I have a question about three different tld extensions all in the same trademark class.

For instance good.golf good.tennis and good.cricket

Now my question is this. I own the GoodGolf GoodTennis and GoodCricket
trademarks in all three wordmarks in classes completely unrelated to the class that
golf, tennis, and cricket are protected by. Someone else already owns the domain name good.golf that he failed to get granted a registered trademark for in sports and they are claiming the other two unreleased domain names as theirs by legal right. Do you think I might have any rights to acquire the two domain names that have not yet been released?

These are not actual properties of mine. They are given as parallel examples only
of the other real intellectual properties that I want to keep private because I know these
questions and answers get released eventually to the web.

I realise that nothing I can actually say or do now is going to influence your answer, but I obviously hope that you might see a valid argument for me to claim the domains.
Expert:  Wilton A. Person replied 3 years ago.
You can generally register the same name if it is used for different services or products. The issuance of a trademark registration for a trademark does not provide an exclusive monopoly for the person to use the trademark in other service or product categories to the exclusion of all other parties.

One exception to this general rule is related to the doctrine of the "family of marks" which is usually associated with famous marks such as McDonalds. The "family of marks" doctrine can prevent the registration of similar trademarks for different products and services because trademark law essentially grants a monopoly for the famous trademark.

Whether you should or should not proceed with registering the marks should be based upon a comprehensive review of the specific facts of your case by an intellectual property attorney.
Customer: replied 3 years ago.
gr8.
Thanks.
I have tried to accept this answer three times now to credit you but paypal will not work with it for some reason.
Please can you send me another crediting button?
Expert:  Wilton A. Person replied 3 years ago.
You are welcome. Thank you for your efforts. This response should allow you to rate.
Customer: replied 3 years ago.
The accept and credit button has failed to work on this question three times now for me. Please can you send me another crediting button?
Expert:  Wilton A. Person replied 3 years ago.
I appreciate your efforts to provide credit for my response. I am not sure why the button does not appear but I believe that the button will appear if you post in a new question. In the interim, I will forward the issue to customer service. Thanks.
Wilton A. Person, Lawyer
Satisfied Customers: 4147
Experience: MBA, Experienced and Knowledgeable in Intellectual Property Law
Wilton A. Person and other Intellectual Property Law Specialists are ready to help you
Customer: replied 3 years ago.
I need about 900 words max writing by a qualified intellectual property lawyer to submit the case to arbitration and win the rights to the domain name. You seem to be about the best expert I have ever come accross in the field and you are also qualified to do the job, so if I gave you a website to contact me on like NorthAmerica.mx would you be willing to undertake the work concerned if we could fix a fixed price for the whole job?
Expert:  Wilton A. Person replied 3 years ago.
I appreciate your positive comments but the website does not allow me to provide my contact information through its medium.

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