poll BREAKING - DOMAINS CAN NOW BE TRADEMARKED

[Internet.Domains]

https://www.lexology.com/library/detail.aspx?g=f5f76ee7-d39a-409d-afc3-f41d1cd777a7

"After conducting her own analysis, Judge Brinkema found that “when combined with an SLD, a TLD generally has source identifying significance and the combination of a generic SLD and a TLD is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.”


"Why it matters: Judge Brinkema attempted to define the boundaries of her opinion by noting that not all domain name marks are protectable, but that a generic SLD combined with a TLD can create a descriptive mark that is eligible for protection only upon a showing it had acquired distinctiveness or a secondary meaning. But the decision has made headlines for granting trademark protection of a domain name, a move that flies in the face of Federal Circuit precedent and could encourage similar filings from websites."

What do you think?....Is this good news for domain investors?

 

[jideofor]

huh?

 

[Internet.Domains]

huh?

This is a reversal of previous decisions...Great news for domain investors IMO...

 

[jideofor]

This is a reversal of previous decisions...Great news for domain investors IMO...

I do not think it is really a good news. Why? Someone can trademark you domain name and collect the domain name from you.

 

[Internet.Domains]

I do not think it is really a good news. Why? Someone can trademark you domain name and collect the domain name from you.

I don't see that as an issue. For a domain TM you need to have acquired distinctiveness or a secondary meaning.....Without owning a domain it would be hard to show distinctiveness and/or a secondary meaning...

 

[baseballworld]

So domain trademarks will be separate from company ones?

 

[Internet.Domains]

So domain trademarks will be separate from company ones?

That's my understanding.... If anyone interprets it differently I would love to hear it.

 

[baseballworld]

This could open a world of opportunity here.

 

[Internet.Domains]

This could open a world of opportunity here.

That is my understanding........I think this is extraordinary great news for investors and developers.

 

[Smiles76]

I don't see how this helps domainers at all. I assume you can only trademark the specific domain and extension that you own which means the TM is not necessary because there is only one domain with that specific extension. If you're able to trademark the name and it applies to all extensions, that would be a mess because I could trademark coffee.shop for example and claim the rights to coffeeshop.com coffeeshop.net, etc.

 

[hxp]

I'm not sure I understand it correctly...

But, basically, some can own a domain, trademark it, drop it, and still practically own it?

It creates a new form of ownership. Not a good idea, IMO.

 

[Internet.Domains]

Not sure someone would drop a domain they would get Trademarked, but I suppose it could make for some interesting drops......

 

[Ategy]

Yeah .. upon quick 1 minute analysis I have to agree with @Smiles76 .. if you already own the domain then there really is no point in trademarking it .. in fact .. i would have hoped you enjoy trademark-like rights without having to actually specifically go through all the trademark paperwork and fees and other steps.

While on the other hand .. I think it this can possibly be a pretty big can of worms open to abuse. Will someone be able to trademark a domain they don't own? What if a domainer owns it but isn't actually using it? If "ownership" of a domain is considered "use" (as opposed to actual development), then I think all will be fine .. but I'm pretty sure in order to "defend" a trademark you actually need to be actively using it .. which might be tricky to prove for a domainer with an undeveloped domain.

Anyhow .. I'm not a lawyer .. but looking forward to hearing a lawyer's opinion! lol

 

[hxp]

Not sure someone would drop a domain they would get Trademarked, but I suppose it could make for some interesting drops......

Happens all the time. Even Google dropped Google.com.

That's not the only point though. It creates a concept similar to patent trolling. Someone could trademark a domain and no one else could effectively use that domain again, even if it was available or they had the money to buy it.

People could also register/buy domains, trademark them, then drop/sell them. Then, when someone tries to use it, they could show up with their trademark.

You could essentially register a domain for 1 year, and trademark it for a lifetime...

I don't like it.

 

[Stonebanks]

Yeah .. upon quick 1 minute analysis I have to agree with @Smiles76 .. if you already own the domain then there really is no point in trademarking it .. in fact .. i would have hoped you enjoy trademark-like rights without having to actually specifically go through all the trademark paperwork and fees and other steps.

While on the other hand .. I think it this can possibly be a pretty big can of worms open to abuse. Will someone be able to trademark a domain they don't own? What if a domainer owns it but isn't actually using it? If "ownership" of a domain is considered "use" (as opposed to actual development), then I think all will be fine .. but I'm pretty sure in order to "defend" a trademark you actually need to be actively using it .. which might be tricky to prove for a domainer with an undeveloped domain.

Anyhow .. I'm not a lawyer .. but looking forward to hearing a lawyer's opinion! lol

If it becomes a thing that you actually need to use it to not lose it, I'm sure we're going to start seeing domainers developing a lot of websites under their valuable domains to help defend against it?
But that will change us from domainers to website investors/flippers, which I personally think SUCKS
But that's only if I understand this whole thing correctly that is

 

[Internet.Domains]

Lets step back for a minute folks...Just because you can apply for a TM it does not mean you are granted one. The TM process requires a fair amount of evidence and if you read the decision (link below) you will see the amount of evidence Booking.com supplied to be given this historical victory. These are not going to be given out like candy.

https://www.manatt.com/Manatt/media/Documents/Articles/Booking-com-v-Matal.pdf

 

[Kuffy]

I think it is good news. As I see it the following facts apply.

• As I own Kuffy.com, I can trademark the name + extension
• As the trademark only applies to the .com, then I dont have rights to any other extension
• If I don't own the .com, then I can be accused of "passing off" if I use the name + extension.
• If I let the name drop, then it is assumed that I have no further interest in the name, and I assume this will apply to the trademark, this will not apply if I own the trademark without the extension.

Now her is an interesting point. I own the name BuyAny.com. If I trademark this, does that mean that no domainer will be able to use the phrase "buy any .com"?

 

[Ategy]

Now her is an interesting point. I own the name BuyAny.com. If I trademark this, does that mean that no domainer will be able to use the phrase "buy any .com"?

I'm thinking "Buy any .com" or any term "Buy any ____" would be too broad in scope to successfully trademark.

 

[Kuffy]

But it isn't broad if you add the .com.

Don't worry guys, I'm too mean to pay the trademark fee.

 

[Ategy]

I'm thinking it actually is too broad ...

While "buyany.com" is unique, the term "Buy Any .com" actually represents tens of millions of domains.

My understanding is that trademarks don't need to be exact to be infringed upon.

For instance if you open a MacDonald selling burgers, you're still infringing on McDonald's despite the different letters.

That being said .. we also need to remember that trademarks are also usually category specific. So I'm thinking that in theory you could use "buyany.com" (the words, not necessarily the domain) to market compasses even without owning the .com (not that it would be a smart thing to do in any way .. lol)