Asked for assurance that “you won’t infringe again”

[Rebies]

We have a domain I marginally believe is trademarked. Let’s call the trademark “XXL” (out of pure randomness.) We own XXLweb.com and get a legal letter from their representing law firm.

We have no issue transferring this domain to the company that claims trademark ownership. The domain really means little to us. However, the law firm also wants us to agree to no use the name / mark in the future. Sure, we’ll try to not use this mark in the future, but the last thing we’re going to do is sign anything saying we’ll agree to never buy a domain with “XXL” in it again. That’s just plain stupid on our part.

So how do you handle this? Do you ignore this part of the request? I feel legally responsible to put something in the response like “We however can not agree to not purchase any domain in the future that your client might believe is similar. We will take our own precautions to stop this from happening and will in our best efforts try to avoid such issues in the future, but can offer no legal guarantee as I’m sure you can understand.”

Is that calling for more action? I’m not going to sign anything – that is for sure! But at the end of the day I rather transfer the domain to them without any UDRP issues on such an insignificant domain. Or is it just better to reply "sure, here is the domain", but not even acknowledge the request for “future assurances”?

 

[flamewalker]

I'm not sure there's anything wromg with registering a TM'd domain as long as the domain isn't used in a way that infringes on the trademark. Sometimes that's pretty obvious...sometimes it's not. That's why we have forums like this and reputable attorneys to help us figure out the close calls.

There IS something wrong with registering a TM knowingly...sometimes you can use a tm term for another purpose and be ok, but its a huge risk... and usually not worth it. For instance, I recently picked up gamereplay.com, not realizing there was a tm... well I found a use that is non-infringing and did not park it, and the tm owner didn't have the money to fight me over it. Many tm owners will...

Knowingly doing it is wrong... accidentally is another thing that can usually be remedied without too much trouble.

 

[labrocca]

I wish I had enough money to open a gas station...I would name it "Google Gas".

 

[verbster]

There IS something wrong with registering a TM knowingly...sometimes you can use a tm term for another purpose and be ok, but its a huge risk... and usually not worth it.

I agree that it's probably not a good idea to try to use something close to an exact replica of a very distinctive trademark, especially if intentional...that would most likely fall into the "obvious" infringement category. I am not advocating that. But there are other uses that may include all or part of a TM in one category that may be okay to use in another category.

TM'ing "Chocolate" does not mean it can't be used in another unrelated product's TM.
For example, registering "chocolatecellphone.com" would be an obvious infringement on LG"s Chocolate mark for their phone, but using "chocolate" in "worldchocolatemasters.com"" (makers of confectionary) does not infringe on LG's mark. Neither do other names like "lazy chocolate," "chocolate maven" or "peace of chocolate."

As for "Google Gas," I don't know...if your family name is Google, and you've been in the gas station business for 50 years, who knows? It would be an interesting court case, or maybe something similar has already decided the issue, like "McDonald's Fine Furniture" or "Apple Ugly."

 

[labrocca]

http://www.mcdonaldsfurniture.com/

hehe...

It doesn't matter that Google made up the name....what matters is usage. TM status is given for FIRST USE in commerce. Unless I am mistaken Google hasn't been selling Gas just yet. Of course Google would probably argue I would be making money off their mark and they would be right in that regard...but a good lawyer could keep them in the courts for years.

 

[Dave_Z]

As for "Google Gas," I don't know...if your family name is Google, and you've been in the gas station business for 50 years, who knows? It would be an interesting court case, or maybe something similar has already decided the issue, like "McDonald's Fine Furniture" or "Apple Ugly."

Without meaning to go off-topic from this thread, one rare case involving this
is the Nissan.com dispute. Mr. Nissan still has the domain name, but he can't
put up anything car-related on the site.

The moment he does that, he'll give the car company a book to throw at him.

It doesn't matter that Google made up the name....what matters is usage. TM status is given for FIRST USE in commerce. Unless I am mistaken Google hasn't been selling Gas just yet. Of course Google would probably argue I would be making money off their mark and they would be right in that regard...but a good lawyer could keep them in the courts for years.

You could try that. Of course, it might be a challenge to prove, say, users will
not likely confuse that with a uniquely famous trademark. (hint)

Anyway, to sign or not to sign...that is the OP's question. :D

 

[flamewalker]

Actually verbster, I have that exact scenario in the case of "Game Replay"... they used ti for renting video games online, I am (going to) use it for a video archive of matches played on my World Gaming site.

labrocca: ... and you know Google can afford that kind of lawyer

 

[labrocca]

You could try that. Of course, it might be a challenge to prove, say, users will
not likely confuse that with a uniquely famous trademark. (hint)

But they have to prove DAMAGES...if they are not engaged in selling gasoline to customers HOW am I taking away their revenue? That's the point of suing. The burden of proof will be on Google to prove damages. Google Gas would be perfectly legal.

The same rules that apply to Apple also applies to Google. The fact that it's not a dictionary term is meaningless. A mark is a mark and it's usage is the ultimate enforcement of that mark. I guess people haven't been reading my posts all these years very well.

EDIT: I just thought of the PERFECT example of what I am talking about. Acme...it's a latin word as well as Googol. It was used by Warner Brothers for cartoons but has since transformed into Americana as a legit name:

https://www.acmemarkets.com/eCommerceWeb/LandingPageAction.do?action=begin
http://www.acme-superstore.com/
http://www.acmepowerdist.com/
http://www.acmeportable.com/

Acme pulls up 18 million results...there has to be hundreds of companies using the name across the nation.