Another TM question

[zachary0611]

Ok the TM issues seems confusing to me. Why is it ok to register typos isn't this TM infringement? I have been seeing alot of domains with xbox and ipod in the names why arent the they TM infringements? and im sure they don't have permission from apple or xbox

 

[DNQuest.com]

They are infringements and they will lose if challenged. Typos have been deemed as a form of cybersquatting. Just because people do it does not make it right.

 

[zachary0611]

Oh ok well that makes sense. I was reading that some companies can't trademark a name because it is condsidered generic. What makes a term generic besides the obvious. I'm sorry, but for some reason im in a question asking mood.lol Is there a list that says these names are considered generic and are unavaible for trademark.

 

[dgridley]

Generic terms are terms that have come into general useage to describe something.. you can't TM the word "baseball" for example or apple, but you can TM the phrase "major league baseball" or "Golden Brand Applesauce".

Kleenex tissues and Coca-Cola (Coke) are in danger of becoming generic terms through dilution.. people have for years asked for a Kleenex or Coke when any cola or tissue would do. Dilution is one reason companies fight to retain their TMs..Pepsi, for example, insists you correct a customer if they ask for a "coke" and you are serving Pepsi (and vice-versa).

 

[labrocca]

They are infringements and they will lose if challenged. Typos have been deemed as a form of cybersquatting. Just because people do it does not make it right.

That's not really true. There are plenty of domains with a trademark in the name that are NOT a violation of trademark law. There is fair use in many cases. To say that all domains with a trademark in it are infringement is just wrong.

 

[jberryhill]

you can't TM the word "baseball" for example or apple,

You can't TM "apple"? This would surely come as a surprise to Apple.

Folks, you have to think of a trademark as having TWO components - there is the word or symbol constituting the mark, and there are the goods or services on which the mark is used.

A term is not "generic" in a vacuum. A term is "generic for X" when as a practical matter you can't tell me what "X" is without using the term.

Take "dogfood" for example. If you sell cigarettes called "Dogfood", then you would certainly accrue a trademark interest in "Dogfood" as a brand of cigarettes. If you sell dog food called "Dogfood", you are not going to accrue a trademark interest because "dog food" is the generic term for dog food - i.e the term is the definition of the genus.

So, please, try to stop thinking as if X "is generic" or "is not generic". The inquiry only makes sense in terms of "X is generic for ..." where "..." is the thing to which X is applied.

Got it?

There are rare situations where a trademarked product becomes such a category-killer that the trademark itself becomes generic. Examples of genericide include "aspirin", "nylon", "cellophane", "escalator", and "zipper".

If you want a list of generic words, then pick up a dictionary and pair the words with their definitions. But common words can certainly be trademarks - for other things...

CHAMPION spark plugs

DELTA faucets

OBSESSION perfume

EDGE shaving gel

CREST toothpaste

SHELL petroleum products

DELTA airlines

TIDE detergent

SHARP microwave ovens

BORDERS bookstores

CHAMPION mortgage services

CHAMPION clothing

UNITED airlines

UNITED moving services

CRAFTSMAN tools

...all of the capitalized words are "dictionary" words having a generic meaning. Applied as marks to specific goods and services, they are all very well known trademarks. As you will note from the list above, the same word can be a trademark owned by different parties for different goods.

 

[dgridley]

lol, well, perhaps apples wasn't a good analogy!

You can't TM "apple"? This would surely come as a surprise to Apple.

Folks, you have to think of a trademark as having TWO components - there is the word or symbol constituting the mark, and there are the goods or services on which the mark is used.

A term is not "generic" in a vacuum. A term is "generic for X" when as a practical matter you can't tell me what "X" is without using the term.

Take "dogfood" for example. If you sell cigarettes called "Dogfood", then you would certainly accrue a trademark interest in "Dogfood" as a brand of cigarettes. If you sell dog food called "Dogfood", you are not going to accrue a trademark interest because "dog food" is the generic term for dog food - i.e the term is the definition of the genus.

So, please, try to stop thinking as if X "is generic" or "is not generic". The inquiry only makes sense in terms of "X is generic for ..." where "..." is the thing to which X is applied.

Got it?

There are rare situations where a trademarked product becomes such a category-killer that the trademark itself becomes generic. Examples of genericide include "aspirin", "nylon", "cellophane", "escalator", and "zipper".

 

[zachary0611]

Ok thanks for giving me a better understanding of TM that makes sense. I'm sure some of you are domain pros, so some of these questions might seem dumb to you but they are helpful in getting a better understanding.

And also I thought zipper was a completely generic term. lol What else could you call a zipper besides zipper? :hehe:

 

[DNQuest.com]

That's not really true. There are plenty of domains with a trademark in the name that are NOT a violation of trademark law. There is fair use in many cases. To say that all domains with a trademark in it are infringement is just wrong.

While that may be true, they are few and far between, most domains with TMs are used for the sole purpose making money off of traffic generated by the use of the TM in the domain name. The examples of xbox and ipod are not common generic words, they are creations designed specifically for branding. I would say that almost every domain registered with a TM is for the purpose of capturing some of the TMs traffic to make money. The arguement of fair use would only apply to a minimum number of sites, not the "many" as you may claim.

Let's be real here, many people who ask about TMs are using the domain to make or try to make money. There are very few sites which fall under the "fair use" claims.

 

[Peter]

And also I thought zipper was a completely generic term. lol What else could you call a zipper besides zipper? :hehe:

zip fastener. If you take a look at http://dictionary.reference.com/search?q=zipper you will see the history of the word. and as stated there it was a registered trademark in 1925 but as jberryhill states it has now became a generic term.

I think the same has happened to for example hoover. That was originally (and possibly still is) a trademark of a company but the majority of people use the term hoover instead of vacuum cleaner regardless of what make it is.

 

[labrocca]

While that may be true, they are few and far between, most domains with TMs are used for the sole purpose making money off of traffic generated by the use of the TM in the domain name. The examples of xbox and ipod are not common generic words, they are creations designed specifically for branding. I would say that almost every domain registered with a TM is for the purpose of capturing some of the TMs traffic to make money. The arguement of fair use would only apply to a minimum number of sites, not the "many" as you may claim.

Let's be real here, many people who ask about TMs are using the domain to make or try to make money. There are very few sites which fall under the "fair use" claims.

Legally I could start a chain of gas stations called PlayStations...or Xbox Stations. Also you made a blanket statement saying that any domain with xbox or ipod in the title are infringements...that's just not true. And my reference to "many" could be in the hundreds of thousands since there are millions of registered domains. Also fair use comes into play. We both know that "many" domains that are registered are intended for infringment but that's not the point. There are ways to register xbox and ipod names and even use them within the trademark..without being infringments. You can start a non-commercial ipod fan site. I also have heard (jberryhill might be able to confirm) of sites with trademarks that have a viable commercial interest. You should spend more time reading WIPO decisions and trademark law vs making uneducated remarks that you appear to know very little about.

 

[DNQuest.com]

labrocca, by looking at your sigm I can understand your response on this thread. But I will tell you this, a unique made up name (xbox, ipod, yahoo....) will be challenged regardless of catagory. Now, if you're talking generic name like apple, cheer, joy... then classifications would determine if there is infringement or not.

I do agree that there is fair use claims to TMs, but it is solely dependant on its usage. Now if you had an xbox forum, that is ok, but if you use it in bad faith (like using google adsense) then there could be a claim against you for using the TM is bad faith. You are trying to profit off of someone elses hard work of building up the TM. And that is the point of TMs, to protect the company's interest in their products and services. They prevent dillution and profiting unjustly from their TM.

We could go around and around on this all day long, and our point of view differs. But the bottom line is, attempting to profit off of someone else's TM is using the domain in bad faith. Read the many decisions where the respondant had to transfer the domain to the TM holder.

 

[Dave_Z]

Ok the TM issues seems confusing to me. Why is it ok to register typos isn't this TM infringement? I have been seeing alot of domains with xbox and ipod in the names why arent the they TM infringements? and im sure they don't have permission from apple or xbox

3 words: case to case.

 

[labrocca]

labrocca, by looking at your sigm I can understand your response on this thread. But I will tell you this, a unique made up name (xbox, ipod, yahoo....) will be challenged regardless of catagory. Now, if you're talking generic name like apple, cheer, joy... then classifications would determine if there is infringement or not.

You continue making absolute statements like this that are not true. "will be challenged regardless of category"...??? Please...that's a statement that's simply untrue. I have only gotten 2 C&D's and BOTH times I made them go away with simple arguements to them about how I will fight them with fair-use and my claim to rightfully use the domain. One was clearly a made up word in the gaming industry. As you can see from my sig...I have some domains you would consider TM issues. I have over 500 domains...some may or may not have a TM name in them but only 2 C&Ds. Your statement makes it seems that any xbox or ipod name will get a UDRP. That's really stepping over the line of reality.

 

[HockeyGirl71]

You might want to become acquainted with the Federal Trademark Dilution Act.

 

[bluesman]

Several different things must be proven against a domain owner before he can be judged to be chronically "tugging on the tail" of a trademark. It's also often overlooked that once a webmaster is warned about a possible violation in this area, he can often easily change his website right away to omit the offending feature. So it truly is a matter of studying these things on a case by case basis.

Regarding domain names using various verbs, nouns, etc., the rule of thumb has generally been that words commonly found in the dictionary are fair game to be included in domain names. Exceptions to this have already been listed on this thread (such as apple, etc.) but they are relatively rare compared to the millions of domains registered.

Getting back to the first post's subject of typos - no, typos were not considered to be the same as tweaking the melon of a trademark holder by copying a company name or product letter for letter. It is only very recently that there has been serious talk by WIPO of also swatting at the typo guys on a regular basis.

As can be guessed, the sole scam of these "typo types" is based on the odds that surfers will accidentally type things into search engines such as "nintento" instead of "nintendo," etc. These are obvious sneaks, who would refuse to "fix" their site to comply with WIPO, since it would destroy the whole purpose of their crooked sites. (So if challenged, they just dump and run to the next wrongly spelled domain name, until they get caught again.)

On the other question of can you get busted for just having a TM-related name somewhere WITHIN your domain name? Technically, no. For example, if you want to promote your pen-selling biz (or just have a fansite about pens) by registering nibmasters.com, it contains the letters following in order of each other of "IBM." Can IBM therefore come down on you? Of course not. But why risk problems by using names that look and sound too closely like actual TMs, like etunes, iapples, etc.? You're just looking for trouble with such actions, so why in the world would you want to do that?

 

[linker]

confused...

I too am very confused by this issue, this thread has helped, a bit...

Right now I am looking at an available domain that I really want to register, it is a very good domain, high OVT, perfect for the extension, etc... It is a dictionary word, BUT, it is also the name of a very well known company...

If I register this domain knowing full well about the existing company, but lets say I put up a website that say gives the definition of the actual word, or links to dictionary sites definitions of the word, etc... I would not want to do anything to offend the company, but I would only be getting the domain in order to eventually sell it... Would I be looking at a potential problem?

Again, I know people have different opinions of this issue, but some people are more than happy to take on these types of domains...

davezan, you say it can be a case by case basis, any tips on how to judge whether or not a particular domain may be trouble??

Just trying to get a clear grasp on this issue, right now it is very muddy, I think...

Thanks!

 

[bluesman]

Just trying to get a clear grasp on this issue, right now it is very muddy, I think...

Okay, I'll put things in a shorter, more concise way, since some apparently think there are still too many gray areas, or that the picture is still "muddy":

Do NOT prominently use the name of a major corporation in a domain.

Do NOT send "ransom note" emails or otherwise advertise it for sale.

Do NOT create the domain site's links to lead to the company's competition.

Violating those three things alone would be enough in an arbitration case to have WIPO wiping the floor with you!

I trust that should clear things up more than somewhat. In other words, make it on your own, and not on the back of someone else.

 

[linker]

gonna try it...

Just wanted to say that I decided to go for it with the name I was referring to earlier in this thread, regged it a little while ago...

Here is why:

1. Searches done in October 2005
Count Search Term
19409 *******

2. It is a one word domain related to the extension

3. It is a dictionary word that has a proper definition, the term needs explanation and I will develop a site that educates people on what the actual word means. (use something like Saturn for example, there is a company that uses this word but it is also a planet that has a lot of interesting things that people want to know about)

I plan to post a disclaimer that says that my site has no connection to the company that uses the word. If the company that uses this word as their company name comes after me I think I will be in a decent position. What I mean by this is I will gladly give up the name if pressured and I do not think they would get too serious about it... :imho:

Anyway, it will be a learning experience for sure. I certainly did not get the domain to try and have anything to do with that company, I just want to have a domain that can get some good traffic, and if this leads to a sale or some nice revenue so be it...

I do not plan on posting the name or even adverising it just yet, I want to test the waters and see what happens... %%-

 

[DNQuest.com]

bluesman, also add....

Making money from the domain.

Using the domain in a less than generally accepted manner (porn, porn links, gambling, maybe excessive popups, etc)


Labrocca:

The opinions I express are ones that I have gathered from years of research and reading decisions. Just because you don't get caught does not mean you may be violating TMs. I know your side of the issue because you are making money from your domains and you don't want to lose that revenue. But do not be dillussioned here, you are making money from TMed names and that could be considered going beyond "fair use". Since you do not own the TM, it can be view as bad faith.

All I am offering is the truth and going by precedents. Yes, each domain is a case by case matter, but similar facts can get similar results. BTW- I do own 2 TMed domains which I am actually claiming "fair use" when I was challenged on each. And each time they backed down. I have not nor will I ever make money from either domain. They are both information and forum sites. To further clarify, I own the .com of the actual name of the TM.

 

[primacomputer]

One important point I want to add on trademarks... Not only do you trademark in a specific category of goods/services, you also trademark in a specific location. So a trademark in the US protects your rights in the US. Someone in another country could obtain the same trademark for the same type of product in their own country.

All of which has very little to do with domains. Having a trademark is simply one way of demonstrating that you have a legitimate interest in a name which is one part of the UDRP process.

The most important part of the UDRP process in my opinion is the “bad faith” part. The good (and bad) thing about it is that it's a rather subjective decision as to whether a name was registered in bad faith or not. As result it is not always a clear cut yes you can do this, or no you can't. But overall cybersquatters almost always loose the name, while reverse hijacking is quite rare.