question Can Emoji Domains Infringe on Trademarks Based on Literal Interpretation?

[Ategy]

Q: Can Emoji domains infringe on trademarks based on their literal interpretation?

A: , . or

So I was going through my daily lists and came across an emoji domain that I found really interesting.

Please note that while i'm giving one example, I really want this discussion to be global and think about all potential issues for the very large number of emoji domains that are similar in nature.

So .. the domain in question was: .ws

Immediately I though "Applebee" (which i think is a restaurant chain in the USA) .. now .. obviously just as a random website there wouldn't be any issue .. but the real question is ...

Would developing a restaurant related website on .ws be a trademark infraction?

I'm trying to think of other examples .. but the only ones coming to mind are ones where the logo is also trademarked. If you guys can think of other examples, please share!

 

[jberryhill]

So many of these questions seeking mechanical rules miss the entire point of trademarks.

The value of a trademark... it's strength... it's scope... the degree to which a range of things might, or might not, be considered confusingly similar to it... is not determined by some mechanical set of rules.

What you own in a trademark is the value of consumer recognition - that part of the brain of consumers in the relevant market that goes "Oh, that's an Applebee's restaurant" when they drive past the sign on the road. From advertising, past experiences, etc., there is a set of neurons that has an impression - favorable or unfavorable - of what that restaurant is about, what kinds of things are on the menu, and what they might expect if they stopped in to eat.

Would developing a restaurant related website on .ws be a trademark infraction?

Would a substantial portion of consumers in the relevant market think it had something to do with Applebees? That's not a question that anyone can answer absent additional facts. In your case, you already answered the question:

Immediately I thought "Applebee"

Well then. If you are representative of consumers in the relevant market, there's your answer.

But, what is pretty clear is that someone registering that name with the intent to develop it as a restaurant site is obviously trying to exploit the association between "Applebees" and restaurants. I mean, for what plausible reason would anyone do that, if it wasn't for the fact that someone else has invested substantial resources into creating that association?

That's why a lot of my responses to questions here consist of the single word "why?"

The question pretty much answers itself. There's no reason to register and use .ws for a restaurant site absent the well-known (in the US anyway) association of "Applebees" with "restaurants" absent the existing rights in the mark. So the factual question of whether anyone or a substantial number of people would or would not be confused becomes pretty much irrelevant to the question of "what is this person trying to do here?"

So, the relevant question is more along the lines of "why would anyone suppose that .ws was registered and developed as a restaurant site?" Adding to that question "in view of the fact that this person knew full well that 'Applebee's' is a well-known mark for a restaurant chain when they did it", renders the question to be a no-brainer. Obviously, whether or not any relevant consumer is or is not confused by it, the domain name registrant is certainly intending to give it a try.

Was Rene Magritte trying to make you think of a pipe?

Obviously, it is not a pipe. It is an image of a pipe. Be that as it may, the clear intention is to make you think "that's a pipe" while telling you "this is not a pipe". But what is the point of telling you "this is not a pipe" absent knowing that when you look at the image you are going to think "that's a pipe."

The disclaimer doesn't help.