I’ve been advised that I tend to be too negative, since my patience for nonsense is sometimes in short supply.
So I’ll try to turn this into something positive.
A word like “Dumbo” may be a trademark in some contexts, but not others. Of course, Disney has substantial interests and registered marks for merchandise related to the classic animated film which, like most cultural products that Disney rips off, is based on the famous circus elephant by that name.
As a geographic term, “DUMBO” refers to an area of Brooklyn:
https://en.m.wikipedia.org/wiki/Dumbo,_Brooklyn
Dumbo (or
DUMBO, short for
Down
Under the
Manhattan
Bridge
Overpass) is a neighborhood in the
New York City borough of
Brooklyn.
Now, if you do a raw USPTO search for “dumbo” you get a bunch of things from which I’ve picked the following to make some observations:
Serial Number Reg. Number Word Mark Live/Dead
88282190 DUMBO LIVE
88282171 THE DUMBO IMPROVEMENT DISTRICT LIVE
87797962 5671706 TACO DUMBO LIVE
85655026 4483372 DUMBO LIVE
78286699 DUMBO LOFTS DEAD
77979919 3846594 DUMBO LIVE
———————-
The first thing to notice about that list is that there are three registered marks, one abandoned application, and two pending applications. If the reasons for that are not clear, find another hobby. Something with no registration number has never been a registered mark. If it is “live” AND has a registration number, it is a registered mark. If it is “dead”, then it is either a cancelled registration or an abandoned application (again, depending on whether it has a registration number).
For Reg. No. 3846594, there is quite a long roster of goods for which Disney owns rights - housewares, clothing, jewelry, audiovisual recordings, and so on. Obviously, if a “dumbo” domain is being used in a way that treads into Disney merchandise territory, then their famous rat emperor will come after you.
Reg. No. 4483372 is for “Transportation, moving, and storage of goods” and is owned by a moving and storage company in Brooklyn. One thing to notice about that registration is that it is a “2(f)” registration as noted in the data for it. What that means is that the term “dumbo” is admittedly geographically descriptive, but the applicant showed that the mark has been used for those services for long enough on an exclusive basis that it has become distinctive as a mark for those services. It is a narrow mark, as 2(f) marks neceesarily are.
The one Avtar is looking at is a pending application for the word “Dumbo” in a particular graphic style used by the local business district organization like this:
https://blankslatepages.s3.amazonaws.com/55196f2a3d57a-DUMBO.jpg
https://media.bizj.us/view/img/10409629/dumboschaer-008*1200xx4320-2430-0-227.jpg
https://pbs.twimg.com/profile_images/1572545491/bid_logo_k.png
Unlike a 2(f) application, where the term is descriptive but the applicant contends it has become a distinctive mark, this application includes a disclaimer of the textual component “dumbo” per se. It is a concession that “dumbo” alone is not distinctive of their services which, incidentally, are:
“Chamber of commerce services, namely, promoting business and tourism in the neighborhood of DUMBO, Brooklyn, New York area; Promoting economic development in the neighborhood of DUMBO, Brooklyn, New York; Providing information and news in the field of business, namely, information and news on current events and on economic, legislative, and regulatory developments as it relates to and can impact businesses; Providing marketing and promotion of special events.”
You’ll notice that the service description itself uses “dumbo” in the ordinary sense to indicate the neighborhood.
It is not yet a registered mark, because it was only filed a few days ago. But even if it becomes registered, it will not preclude the use of the word “dumbo” as a geographic term referring to that neighborhood.
A geographic term CAN be a mark, but not directly for the geographic place itself. For example, “Vallila” is a neighborhood of Helsinki. It is also a mark for furniture. Whether you win or lose a dispute over a name like this depends on WHAT YOU ARE DOING WITH THE NAME WHILE YOU HAVE IT.
For example, Vallila.com :
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-1458
So, what does this mean? It means that if you register and use a “dumbo” domain name in a way that is intended to trade off the reputation of the Disney elephant, you are in trouble. If you register and use a “dumbo” domain name in a way that is intended as a reference to the geographic area, then you want to investigate whether there are any particular businesses there for which it has nonetheless become a distinctive indicator. But, that shouldn’t be a problem if the subject matter coverage are things like real estate, lodging, travel services, and so on.
I’m sure for some this is all TLDR, but it takes mere moments to state a ridiculous notion. For every question, there is usually an answer which is short, simple, and hopelessly wrong.
