advice The doggone Trademarks

ken.colvin · Jan 29, 2020

I found a domain (ngTLD) in pending delete that seemed quite generic. The .com was registered but not developed. Turns out that there are 34 extensions registered with the same two keywords according to Uniregistry. When I checked for a Trademark on TESS there were actually several for these exact keywords in the same order of the pending delete domain and registered extensions.
My questions are how can there be multiple Trademarks for the exact same words in the exact same order? Since there are several Trademarks why do 34 different extensions have the same two words in the same order registered? I thought that was a no-no. And even though there are trademarks for the two words shown together there are no developed websites for the trademarks?
I'm very confused about what I can register and what I can't or shouldn't. Can you all help?

WatchDogue · Jan 29, 2020

Here are a few suggestions from a non-attorney.

You might go to the Home Page of the Forum and scroll to the MORE DISCUSSION CATEGORIES, click there and go to the Legal Discussion section.

Might be a good place to get more specific answers to your questions.

Also search the term Trademark/s and perhaps you will find some discussions that shed light and offer ideas re tour questions.

Just speculation, it is possible that some domain names were registered prior to a Trademark being granted re those names.

Personally I tread with caution when I brush up against any potential infringement of a TM.

Shackleton · Jan 29, 2020

I am not a lawyer. Trademarks are applied for in specific classes of goods and services. You can apply in single classes or multiple classes. There are 45 classes. 34 for products and 11 for services. You could have a specific trademark in food services, class 43 and another entity could have the same trademark in Construction and Repair Services, class 37. So, for example, you could have an active trademark for Blue Phoenix, a restaurant in class 43 and an active trademark for a construction company named Blue Phoenix in class 37 held by different parties. If, I'm incorrect I am sure someone else will chime in with a correction.

Bob Hawkes · Jan 29, 2020

My (nonlegal expert) understanding is the same as @Shackleton - a TM is awarded for a specific category. Often you have multiple TM on same term as long, as the application categories are different.

Re no developed websites, assuming that the trademarks are truly approved and in use (e.g. check TESS 1A vs 1B), it still does not necessarily mean the company will have a website on the term. For example my company Bob might have an approved and in-use TM for a product or service called Goofily but I might only sell it on my Bob website or not onlne at all.

It is not uncommon to see many registered domains in TM terms. Probably many reasons, but I presume some argue their intended use is a noninfringing category.

It is always best to stay away from potential TM issues. Most TM questions are complex and not black and white (while some are fairly obvious).

Bob

FolioTeam · Jan 29, 2020

Maybe, there are all from the same registrant

ken.colvin · Jan 29, 2020

WatchDogue said:
Here are a few suggestions from a non-attorney.

You might go to the Home Page of the Forum and scroll to the MORE DISCUSSION CATEGORIES, click there and go to the Legal Discussion section.

Might be a good place to get more specific answers to your questions.

Also search the term Trademark/s and perhaps you will find some discussions that shed light and offer ideas re tour questions.

Just speculation, it is possible that some domain names were registered prior to a Trademark being granted re those names.

Personally I tread with caution when I brush up against any potential infringement of a TM.

Thank you for the research info. Still pretty new here!

ken.colvin · Jan 29, 2020

Shackleton said:
I am not a lawyer. Trademarks are applied for in specific classes of goods and services. You can apply in single classes or multiple classes. There are 45 classes. 34 for products and 11 for services. You could have a specific trademark in food services, class 43 and another entity could have the same trademark in Construction and Repair Services, class 37. So, for example, you could have an active trademark for Blue Phoenix, a restaurant in class 43 and an active trademark for a construction company named Blue Phoenix in class 37 held by different parties. If, I'm incorrect I am sure someone else will chime in with a correction.

That really helps my understanding! Many thanks.

ken.colvin · Jan 29, 2020

Bob Hawkes said:
My (nonlegal expert) understanding is the same as @Shackleton - a TM is awarded for a specific category. Often you have multiple TM on same term as long, as the application categories are different.

Re no developed websites, assuming that the trademarks are truly approved and in use (e.g. check TESS 1A vs 1B), it still does not necessarily mean the company will have a website on the term. For example my company Bob might have an approved and in-use TM for a product or service called Goofily but I might only sell it on my Bob website or not onlne at all.

It is not uncommon to see many registered domains in TM terms. Probably many reasons, but I presume some argue their intended use is a noninfringing category.

It is always best to stay away from potential TM issues. Most TM questions are complex and not black and white (while some are fairly obvious).

Bob

Thanks, Bob, for the insights and confirmations. Big help and much appreciated.

ken.colvin · Jan 29, 2020

Based on the enlightenment I received here, it's probably okay to invest in a domain if your thought was that it would be used in a non-trademarked category. But, the wise approach is just to steer clear if there is a TM on the "name".

Reddstagg · Jan 29, 2020

Good evening,

Also, Google the Apple vs Apple TM dispute.

It is explained in a nutshell and gets right to the core.

It peels back the skin of the dispute and it's quite juicy.

Good luck with your endeavours.

Regards,

Redd(apple)stagg

ken.colvin · Feb 5, 2020

Thanks, Reddstagg. I'll check that out and good luck to you, as well.

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