Trademark Attorney Morris Turek

Morris E. Turek

(314) 749-4059

morris@yourtrademarkattorney.com

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Trademark Auction! Going Once. Going Twice. Sold to…?

I have to thank one of my clients for alerting me to an interesting (and kind of weird) trademark event happening this week in New York City.  Apparently, on December 8th at the Waldorf Astoria Hotel, a company by the name of Racebrook Marketing Concepts is holding a “Brand Name Auction” during which “150 Timeless Trademarks” will be sold to the highest bidder.  The website describes the event as follows:

Buy a priceless Trademark, including its Domain Name, and reinvent its commercial success.  Never in the history of marketing and advertising has there been this unique investment opportunity.

The initial purchase is a royalty free, fully paid, exclusive license, including the right to sub license, that you can turn into full ownership when you file the Statement of Use and it is accepted by the Patent and Trademark Office.

Thinking that I may be able to pay off my student loans by getting involved in this “unique investment opportunity,” I conducted some further research and found that a number of different companies have filed intent-to-use applications seeking to register trademarks that were once being used in connection with various products and services but were abandoned due to non-use of the trademark over a long period of time.  A sampling of these marks include:

OLD SODA SHOPPE (Serial No. 77119669) for different types of beverages

PERMASTRATE (Serial No. 77638682) for hair care products

SLENDERELLA (Serial No. 77529111) for weight reduction programs and consultation

KITTEN SOFT (Serial No. 77742795) for paper towels, tissues, and toilet paper

These applications have already been approved by the Trademark Office and were not opposed by a third party during the 30 day publication period.  Therefore, all that remains to achieve registration is for the owners of these applications to file the Statement of Use once they (or their authorized licensees) make commercial use of the marks.  As an aside, I note that almost all of these applications were filed by the same attorney.  Must be good work if you can get it.

So what is really going on here?  Well, the highest bidder is not actually buying the trademark or trademark application because the law prohibits the sale or transfer of intent-to-use trademark applications before the trademark is put in commercial use.  Rather, the highest bidder is merely purchasing from the owner of the application an exclusive, royalty-free license to make use of the mark in association with the products or services listed in the application.  Once the licensee begins to advertise and sell the products/services under the trademark, the owner of the application will be obligated to file the Statement of Use and the Trademark Office will issue the registration.  The owner of the registration will then assign the registration and all rights to the trademark to the licensee, thereby making the licensee the sole owner of the trademark.

Pretty cool, right?  Maybe, but only assuming two things are in place.  First, the “timeless trademark” on which the individual is bidding must still have some positive name recognition and nostalgia among the public.  Otherwise, it would be no different than creating and developing a completely new trademark from scratch.  I personally scanned through the list of trademarks up for auction and found only two that I even vaguely recognized.  I guess “timeless” is in the eye of the beholder.

Second, the license between the highest bidder and the owner of the trademark application cannot be “naked.”  In other words, the owner of the application must set standards for the use of the trademark by the licensee and exercise quality control over the products/services offered under the mark.  If no such license exists, then rights in the trademark may be deemed to have been abandoned and any registration that might issue could be subject to cancellation.  And, let’s face it, will the highest bidder know that such a license is necessary?  Probably not unless he stumbled upon my blog.

All things considered, I think I’ll forgo this historic chance to own a washed-up, has-been, obsolete trademark and find another way to pay off my student loan debt.

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11 Responses to Trademark Auction! Going Once. Going Twice. Sold to…?

  1. Brian Gregg says:

    I like your blog and this particular article. This auction of intent-to-use applications also raises an interesting issue of whether the applicant has the requisite “bona fide intent to use” the mark (the buyer may, but it’s not clear this counts for the applicant). There may also be a fraud issue here. These applications could be subject to attack on those grounds.

    Looking forward to reading more in the future.

    Brian

  2. Guy Caudill says:

    I would like to sell my trademark. Statement of use granted. Trademark serial number is 77928554.

  3. Morris Turek says:

    You absolutely can sell your trademark since it is in use in connection with your products/services. I suggest you seek the knowledge and advice of a trademark attorney to ensure that any trademark transfer or assignment is completed properly.

  4. Brian says:

    I am looking for a venue to sell a trademark with matching domain name. Currently this is associated with my business (LLC in the state of Oregon). What is unique about my situation is that the most of the value is in the Trademark name and domain as the business is not active. I’ve found venues for domain sales and a few for businesses (mostly up and running) I haven’t found a place to sell a trademark with domain. Any ideas?

    Thank you,

  5. Morris Turek says:

    Brian,

    Sounds like an interesting issue. Please give me a call directly to discuss.

    Thanks,
    Morris

  6. Debby Adams says:

    Dear Morris;

    I want to sell my trademark and domain name. I’ve owned this trademark since 1999 and have had www presence continuously since 1999. I am still doing business under this name but want to start a new business under a different name. Can you help me sell and how much do you think I can get and how much will it cost me to sell? Thank you.

    Debby Adams

  7. Morris Turek says:

    Dear Debby,

    Thank you for your post. I just sent you an email so we can privately discuss this matter. I look forward to hearing from you soon.

    Thank you,
    Morris

  8. Alm says:

    I am in the same boat as Brian (above) mine is an S corporation. I want to sell my trademark and domain name but the business not active. Any advice? Thanks in advance!

  9. Morris Turek says:

    Thank you for the post. I would be glad to speak with you about this. Please feel free to give me a call and we can chat.

    Morris

  10. sanjay shah says:

    I have a domain name India24x7.com. I guess india being country name, can NOT be filed for TM. Similarly, I was told by my friend that, 24×7 also, can NOT be trade-marked.

    What is your opinion? To protect my new coming web portal, india24x7.com, Can i file for TM?

    Thanks.

  11. Morris Turek says:

    Dear Sanjay,

    Thank you for your inquiry. I am going to send you an email about this matter so we can discuss it privately.

    Sincerely,
    Morris

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