discuss Trademark... 'The'...

(Insert disclaimer that I am not a lawyer and this is not legal advice here)

Maybe.

In the US at least it is my understanding that it dosent have to be an exact match just confusingly similar to violate someone's tm.

DefinitelyDomains said:

OK, so as an example 'The Blue Whale' is trademarked and I want to register the domain, 'BlueWhale'.

Is this OK and unlikely to cause any issues down the line? What do you reckon?

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It depends. It is impossible to answer a question like that fully, without more details.

In this example blue whale clearly is a generic term that would make a good brand for many uses.

However, it is protectable as TM as well, especially in an unrelated field.

If it was a suggestive TM, like for instance seafood related, that might not be as protected.

Brad

bmugford said:

It depends. It is impossible to answer a question like that fully, without more details.

In this example blue whale clearly is a generic term that would make a good brand for many uses.

However, it is protectable as TM as well, especially in an unrelated field.

If it was a suggestive TM, like for instance seafood related, that might not be as protected.

Brad

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Assuming that 'The Blue Whale' is a software company, would it still be a trademark infringement if he (or the buyer) uses BlueWhale.com for a restaurant?

BrandAptly.com said:

Assuming that 'The Blue Whale' is a software company, would it still be a trademark infringement if he (or the buyer) uses BlueWhale.com for a restaurant?

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I think it would be very hard to successfully argue that it is infringing in that case.
They are totally unrelated fields.

Brad

bmugford said:

I think it would be very hard to successfully argue that it is infringing in that case.
They are totally unrelated fields.

Brad

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Which brings me to my next question...
Based on your response, is it still a bad idea for a domainer to register BlueWhale.com for resale since he/she has no control over the end-user's application of the domain?

But RedWhale.com is ok.

BrandAptly.com said:

Which brings me to my next question...
Based on your response, is it still a bad idea for a domainer to register BlueWhale.com for resale since he/she has no control over the end-user's application of the domain?

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Most popular terms or phrases generally have some kind of TMs. That is how it works with popular terms.

I would feel comfortable owning BlueWhale.com. It is easily defendable in my view.

With that said often these theoretical arguments have many more factors that need to be considered.

Brad

Personally if there is a tm live for a term I want to see multiple companies actively using the term. I can't speak for how a UDRP would unfold but I feel if just one company uses a tm you could say it's not bad faith because another buyer could use it for a different business but if there are already multiple businesses using a term I personally feel it gives some credibility to such a claim.