Domain Name News wrote yesterday about the current sale of a trademark for “Sex.Sex” on eBay by its owner, as the best contender to an adult gTLD, with potentially a higher chance of approval than the much-despised .xxx
Although the sale is based on pure speculation – there is no guarantee that ICANN would ever approve of a .sex gTLD – the auction of the Sex.Sex trademark entails some particular details that are related to the goods and services one plans to provide in relation to the mark.
Trademarks are considered to be special kinds of property and one must use care when crafting the sale so that it is effective and enforceable by both parties to the transaction.
In the current newsletter by Lipton, Weinberger & Husick, this particular issue is covered, and I quote a small part thereof:
To ensure that your sale or assignment of a trademark is proper, you must understand that trademarks are merely symbols of good will. “Good will” is the reputation and advantage that your business has acquired over time. One commentator has described the relationship between a trademark symbol and good will as “inseparable as Siamese Twins who cannot be separated without death to both.” Without a business or without good will, a trademark is worthless. That brings us to the first requirement: the trademark you wish to assign must be in use. If you’re not using the trademark then there is no associated goodwill and the trademark is worthless. […]
A trademark assignment that is made without its associated goodwill is said to be an “assignment in gross” or a “naked assignment.” Such assignments, are forbidden by law and will be deemed invalid if challenged in court.
It makes good sense to use the services of an IP attorney or law firm who can help you avoid the pitfalls of a mark purchase that does not observe the guidelines of the law, especially in a field such as intellectual property as related to the business of domaining.
You can find more information at Lipton, Weinberger & Husick (you can also sign up for their newsletter) whose services I have used and which I recommend.
This is moronic. This is nothing more than “Trademark Squatting,” and the trademark is worthless. If you look through the file, it is clear that the entire application was a fraud. Even if it wasn’t, trademarks are not domain names, traded as property. Divorced from the business they represent, there is no trademark.
Hey Marc 🙂 The fraud is obvious. It even looks like a make-believe box containing “software” was used. Truly a waste of money.