Trade mark - formerly abandoned mark

barman linen

I am registering a new trademark in Ireland for eventual global use. The name was used by a US company in 2001-2 but a search at WIPO shows it as 'abandoned'. I have secured all of the .com, .co.uk, .net & .mobi website addresses for a nominal / normal sum.

I filed today with the Patent office in Ireland ( online ) ...does anyone have experience of 'waking the bear' by utilising a previously held Trademark ?

Will my filing today give me priority for a year globally ? ( I cant afford the 3000 euro cost of filing globally today )

Any other experience of trademark litigation would be welcome.....

_Jumper_

Just outta curiosity, could you not have picked a name that hadn't been used?

barman linen

_Jumper_ wrote: »

Just outta curiosity, could you not have picked a name that hadn't been used?

The name means more today than it did in 2000....more relevant to the business model.

FreudianSlippers

barman linen wrote: »

I am registering a new trademark in Ireland for eventual global use. The name was used by a US company in 2001-2 but a search at WIPO shows it as 'abandoned'. I have secured all of the .com, .co.uk, .net & .mobi website addresses for a nominal / normal sum.

I filed today with the Patent office in Ireland ( online ) ...does anyone have experience of 'waking the bear' by utilising a previously held Trademark ?

Will my filing today give me priority for a year globally ? ( I cant afford the 3000 euro cost of filing globally today )

Any other experience of trademark litigation would be welcome.....

This is a common misconception about (particularly US) trademarks. There are multiple reasons that the US PTO may show a mark as "abandoned" and the law is clear that the important thing is use of the mark as opposed to registration of the mark.

If you intend to use the mark globally, you really should see a solicitor who deals with trademarks - they will be able to do the due diligence and ensure that you can use/register the mark globally.

Nobody here can advise you regarding the risks or making use of the mark without knowing if it is still in use.

barman linen

FreudianSlippers wrote: »

This is a common misconception about (particularly US) trademarks. There are multiple reasons that the US PTO may show a mark as "abandoned" and the law is clear that the important thing is use of the mark as opposed to registration of the mark.

If you intend to use the mark globally, you really should see a solicitor who deals with trademarks - they will be able to do the due diligence and ensure that you can use/register the mark globally.

Nobody here can advise you regarding the risks or making use of the mark without knowing if it is still in use.

Thanks....it is not in use and any reference to it online is 10 years old. The phone numbers are dead but the original parent is working in the same business but not using the trademark. It is important that the .com address was free.

It was registered only domestically in the US.

I hear you about the trademark lawyer but I am only starting up and cant afford those costs. It only costs 70 to register in Ireland so am starting that clock anyhow.

FreudianSlippers

barman linen wrote: »

Thanks....it is not in use and any reference to it online is 10 years old. The phone numbers are dead but the original parent is working in the same business but not using the trademark. It is important that the .com address was free.

It's not as important as you'd think, but that's up to you.

It was registered only domestically in the US.

I hear you about the trademark lawyer but I am only starting up and cant afford those costs. It only costs 70 to register in Ireland so am starting that clock anyhow.

That's fine, and you're probably safe to use it in Ireland if you have done the research here, but I'd still take legal advice before using it in the US.

nuac

Can you do your various registrations thru' a limited company? ( and take legal advice on that, and on your plans generally )

You do want to be on the wrong side of trade mark and related litigation.

Could be expensive and risky to your personal assets.

barman linen

I hear you....am aware that this is a minefield but cost is an issue at the moment so need to get the priority of the Irish mark before I go global.

I am registering a 'mark' that includes the xxxx.com name and the previous registration in the domestic US is only the 'word' XXXX

I have a couple of alternative variations I can use but the actual word encapsulates the essence of the business model more than the alternatives...

Having said that....the original owner has deep pockets and I am aware of their litigious nature on trademarks.