I have said it before but it always seems to come back up, don’t take legal advice from a domainer with no legal background.
Of course no one wants to pay money each and every time a potential issue comes up. But either you are running a business or you have a hobby or even worse you are just buying raffle tickets that have a one year shelf life. If you have assets you consider important/valuable, you might have to spend some money from time to time to protect them.
There was a post on Namepros where someone said they registered a brandable name.
The member posted:
registered a brandable domain a while ago, and just found out the domain was belong to a company because they sent me an email and asked me to return it to them – apparently they forgot to renew the domain, I did a trademark search for the word, and it was abandoned long before I registered the domain. What should I do about it?
Then the flurry of comments come in along the lines of, “tell them to pound sand” “you are in control” “push the domain to me and tell them it sold.”
This member has not said what the name is, admitted to parking it and no one commenting has any clue to what ads showed up.
Lastly, most importantly, because a company let their tm expire with the USPTO, does not mean they do not have trademark rights.
In an article published on TrademarkNow.com, Nick Potts touches upon the topic.
From the article:
If the mark has been abandoned for 3 to 5 years, odds are, you’re in the clear. That’s the span that the USPTO requires trademarks to be maintained, meaning if the proper paperwork hasn’t been filed, it’s potentially up for grabs.
The risk comes from the Lanham Act.
Through this act, a mark is not abandoned until it’s been discontinued without intent to resume use. While the USPTO will not track the mark in their registry as active because the paperwork has not been filed, this doesn’t mean that the mark isn’t still being used by a business who has an acceptable reason for not maintaining it in the registry.
So if the business is still running and offering goods or services under that mark, they still have rights. A UDRP is certainly worth pursuing for that company.
If you have a simple question it’s worth emailing them and seeing if they can provide you a simple answer. If you need actual help you can see how much they are going to charge up front?