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discuss Trademark vs. Domain Name

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l may be putting my subject matter in the wrong “area,”’but l’m afraid to put it in any other thread because an intrepid NamePros “detective” will likely tell me l can’t post my message without adding tags.

And even though l teach university English, l never learned what a tag is, so NamePros has more than a few times prevented me from sending a message.

I’ve bought more than 50 domain names from NameSilo and revere NamePros’ many positives, but l believe it has one glaring Achilles Heel: it assumes members know the zillion different domaining terms found on this site—and offers no way for in-the-dark members to find out what these terms mean. I mean a glossary would be so helpful that contains brief definitions of such terms as “tags,”’”Domain Authority,” “LLLL,” “blockchain,”—and myriad more terms that relate almost exclusively to domaining. Oh well, no one—or web site—is perfect.

Anyway, l’m into naming for SquadHelp, and a recent Contest requested domain names for hair salons.

I came up with a quality name, in my mind, that wasn’t registered as a domain name. I became curious whether my “haircare salon” name was trademarked, and learned l could find out by checking TESS, a sort of Whois for trademarks.

Nope, my hair idea was not trademarked. If it were, and here finally is the reason for my message (if you can read it, as NamePros has allowed me to send it without a tag)—if my “hair salon name” was trademarked—does this trademark take precedence over an exactly-the-same-name domain name? And so the ”trademarker” could legally preclude the domainer from naming his or her salons using
a trademarked name?

Confused? I can understand. But if you understand the thrust of my message, l would certainly appreciate an answer.

Thanking you in advance!
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
TM law is not really black and white. It is a case by case basis.

Though in this case "haircare salon" is really just a descriptive term. It would hard for that to become an enforceable trademark because it is simply a descriptive term.

Brad
 
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Thanks for your quick reply, Brad. Actually, “haircare salon” is just a generic term l used instead of the name l conceived.

Lew R.
 
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I see your big pain about post tags, but I don't really understand the issue - I have never had such an issue on NP, I have never been prevented from posting for that reason.

As for your actual trademark question, I am completely outsider in that field, but I have had the same interest because of domains I own, so this is what I have learned; once again, please note it's not legal advice, I'm not expert in treademark issues!
  • Trademark infringements are resolved before WIPO.
  • The person/company (complainant) that claims you (respondent) infringed their trademark, must prove three things:
    • Domain name is identical or confusingly similar to their TM.
    • Respondent does not have legitimate right to use that domain name.
    • Respondent registered and uses domain name in bad faith.
  • If they fail to prove one of the three above, you retain domain name.
  • More details here: https://www.wipo.int/amc/en/domains/guide/
  • In layman terms: if you register domain apple.com, and try to sell computers, you're in for a trouble. If you own a farm of apples and try to sell actual, red or green edible apples with a worm inside, you're good to go.
  • That's one side of the medal. On the other side:
So, as said before, it's n ot black and white. Carefully examine your domain name, and hope for the best! :)
 
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Thanks for your quick reply, Brad. Actually, “haircare salon” is just a generic term l used instead of the name l conceived.

Lew R.

Right. That is why it is not black and white.
TM issues have a lot of nuances.

Here is a good summary from here - https://www.bitlaw.com/trademark/degrees.html

Devices that are fanciful, arbitrary, or suggestive are considered distinctive enough to function as trademarks. On the other hand, if a device is descriptive, the device can function as a trademark or service mark only if it has obtained secondary meaning. Generic devices can never be a trademark.

The "strength" of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts.

You can also have multiple trademarks for the same term in different fields as well.

Brad
 
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Thanks, Strugar, for your interesting, informative and thorough response—so quickly, too! I don’t know what the acronym WIPO stands for, but l believe it’s meaning would be easy to track down.
 
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Google "Google auto sales jersey city" always makes me shake my head.

Also from my new understanding.

NEVER REACH OUT TO A TRADEMARK HOLDER.

To play it safe even if you reg before they even started their biz or trademark.

Any idiot can hire a hungry lawyer just to send you a cease and desist and threaten lawsuit if you don't hand over your domain . If TM holder reaches out to you first to buy? Thats best.
 
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