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[KF]

I have a couple of questions that I hope can be made specific enough to get some useful information, but realize real specificity is everything in TM law.  

Here are the 'facts':

1. I want to use a phrase or mark for a web advertising site which is the same as the domain name (the product is real estate on the site to advertise on) that is similar to a registered TM.  The registered TM is registered as a service mark (computer services, web hosting, creating and maintaining web sites).

2.  The owner of the TM has not used the mark on his web site since Feb 2005.  In fact, his site hasnt even been accessible (ie. not even on a server) since then either.  It has basically been shut down since that time. For a web hoster and web design company that is exceptional.

3.  There are numerous uses of this TM phrase all over the web (over 400,000 on yahoo search, though most are just in news articles), so it appears that the owner has not defended the mark. Lets assume they havent.

My questions:

1.  Is web advertising sufficiently similar to web hosting and design to make the TM use an issue on that basis alone? Or put another way, is it sufficiently different as to make differentiation in use a possible claim?

2.  What is the chance that abandonment has occurred given what Ive stated? I realize that the owner can still use the mark in literature and correspondence.

3.  If I buy the website domain from the TM owner that he used for the TM service (TM is not the same as the domain name), does that strengthen a case for abandonment?

Thanks much.

Kent

[Isaac]

I have a couple of questions that I hope can be made specific enough to get some useful information, but realize real specificity is everything in TM law.  

Here are the 'facts':

There is really no point in detailed analysis of incomplete trademark hypos other for the purpose of passing a law school IP exam.   You need all of the real facts including the marks in question.  I'll answer the easy questions only.

2.  What is the chance that abandonment has occurred given what Ive stated? I realize that the owner can still use the mark in literature and correspondence.

Abandonment means non use with an intent not to resume use.   No way to evaluate a possible intent to resume use in your scenario.

3.  If I buy the website domain from the TM owner that he used for the TM service (TM is not the same as the domain name), does that strengthen a case for abandonment?

Might arguably be a factor in favor of a finding of abandonment?   Suppose the TM owner's plan was to acquire a domain that did include his trademark.   In that case, he could refute the inference of abandonment.