Can "PORTAL" or "SITE" be TRADEMARKED?

[binaryman]

Can "PORTAL" or "SITE" be TRADEMARKED?

On the internet some words have aquired a meaning of their own, almost, if not generic. Words like PORTAL, WEBSITE,WEBPAGE ect. These words are basicly internet catagories if you like. You will find them being used to catagorise or group similar things together. For instance ARTPORTAL or ARTSITE or ARTPAGE or ARTWEB. Or JOBPORTAL,JOBPAGE or JOBSITE. Now recently I have noticed that some of these catagories have been trademarked by certain businesses. Is this allowed? Can I trademark for instance BOATSITE or BIKEWEB or FOODPORTAL? And if I did does it mean that no-one else is allowed to use those trademarked terms on the internet. Say I start a company selling boats. So I decide to call it BOATSITE and trademark it as such. Will my application for trademark on BOATSITE be accepted or rejected on the grounds that it is too generic in nature? OK assuming it is accepted and I get the trademark. Then I register BOATSITE.com. I have seen two instances where names ending in "SITE" or "PORTAL" have been trademarked. On my website I put my TM mark next to my company name. BOATSITE TM. After a while I notice that someone else has registered a domain called BOATSITE.net Can I send them a cease and desist and get them to hand over their .net site to me? In fact can I get anyone who registers a domain called boatsite under any of the other extensions such as .info,.org, .us .de ect to hand it over to me? Am I in fact the only entity now who is allowed to use the term BOATSITE on the internet as I have the Trademark and can force anyone else who registers BOATSITE under another extension to hand it over to me. Am I correct in thinking this?
Regards
Thank you
Fred

 

[labrocca]

No they can't. You can't trademark a name that's generic to it's field. However JangaPortal.com could be trademarked. Janga being the important word here. They wouldn't be able to stop anyone from using portal though.

 

[Dave_Z]

A trademark isn't some magical amulet granting you absolute exclusivity to a
term. It can and can't be used against certain domain registrants depending
on various factors (e.g. usage, registration date, etc.).

IIRC WIPO reminded the Easy Group they don't have exclusivity over the word
"easy". Just google for it.

Think of it this way: if you're thinking of registering a domain and someone has
established trademark rights to that term, you don't want them stopping you
from using it because only they have absolute exclusive rights to the term, do
you? Especially if you're going to use it for a totally different non-commercial
topic?

If you feel bad something like that happen to you, imagine the other person if
ever you did that to him/her. Respect, man, respect.

 

[binaryman]

Respect..Yes I respect everybody.

 

[Domagon]

The Internet is trademarked ... well, ok the word "Internet" is trademarked by several different entities.

That's why on many TM applications that involve an internet website, etc they will use the phrase "global computer network" instead of "internet".

Ron

 

[labrocca]

The Internet is trademarked ... well, ok the word "Internet" is trademarked by several different entities.

That's why on many TM applications that involve an internet website, etc they will use the phrase "global computer network" instead of "internet".

Ron

Where the hell do you get these lies from? Certainly you have to be the most clueless person I have seen in quite some time. If you don't know what you are talking about don't say anything. Your post is 100% fabrication. It's insulting and misleading. Get a clue.

 

[Ronald Regging]

Haha you tell him labrocca! I always enjoy reading replies by you and DNQuest, because while I don't always agree with you both, I think you guys have the best grasp on the legal aspects of domaining. I find myself spending more time reading this particular section of NP than any other.

 

[Domagon]

Personal attacks sign of ignorance and not welcomed...

Where the hell do you get these lies from? Certainly you have to be the most clueless person I have seen in quite some time. If you don't know what you are talking about don't say anything. Your post is 100% fabrication. It's insulting and misleading. Get a clue.

Are you an attorney?

I know for certain that the statement "global computer network" and similar was used on many TMs because of the "internet" TM issue years ago; I ran into that situation personally when I hired an experienced attorney. I never said such wording to be necessary now, but it was an issue in the recent past.

What I wrote about the word "internet" being trademarked (whether it's enforceable or not is another issue) is correct - if you can document otherwise, then do so ... personal attacks are a sign of weakness and ignorance, and thus not welcomed.

So again, if you believe what I wrote is incorrect, please state why.

Ron

 

[labrocca]

One only needs to do a TESS lookup for internet to see your statement was pure fabrication. Also it's irrelevant to the original question. You're just bloviating.

Find me a the serial number for the term "internet" at TESS. The term "Internet" is NOT trademarked. I see internet used often in names such as "Internetdisk" or "PITTSBURGH INTERNET EXCHANGE" but the word "internet" isn't TMed. Also dead TMs don't count as you say it in the present tense that the term is indeed TMed.

If you search for INTERNET you will get THOUSANDS of TMs using the term..live and dead. This directly disputes your "global computer network" theory. "Global computer network" may be used but NOT because the term INTERNET is TMed. Most often when this term is used the internet term is also used. One would think the reason is because of smart lawyers knowing that a Global Computer Network may not mean the Internet in the future. It may mean an intranet or possibly some future satellite or wireless network that may be actually different than the internet. When you create a TM you want to make it as broad as possibly allowed.

I don't have to be a lawyer to smell the bullcrap of your statement a mile away.

btw...not being able to admit your wrong is a sign of weakness and ignorance

 

[Domagon]

I'm certainly glad you acknowledge NOT being an attorney ...

Try the following free-form search...

internet[fm] and live[ld]

1 75695124 2395205 INTERNET TARR LIVE
2 75115689 2374108 INTERNET TARR LIVE
3 74632743 2027675 INTERNET TARR LIVE
4 74689438 2408950 INTERNET TARR LIVE
5 74374753 2374089 INTERNET TARR LIVE
6 74374629 2374088 INTERNET TARR LIVE
7 74374587 2374087 INTERNET TARR LIVE
8 74374583 2374086 INTERNET TARR LIVE
9 74374577 2374085 INTERNET TARR LIVE
10 74683785 2175917 INTERNET TARR LIVE
11 74651309 2207812 INTERNET TARR LIVE
12 74648841 2159817 INTERNET TARR LIVE
13 74180426 1741790 INTERNET TARR LIVE
14 73801226 1576857 INTERNET TARR LIVE
15 73799139 1610843 INTERNET TARR LIVE
16 73614151 1441474 INTERNET TARR LIVE
17 73478694 1322486 INTERNET TARR LIVE
18 73375591 1274148 INTERNET TARR LIVE

Some reference previous registrations - for more details do same query without "and live[ld]"

On a related note, "dead" is in reference to TM registrations - even if "dead" a TM may still be actively in use in commerce; be a common law TM.

Now you were saying ... LOL!

Ron

 

[Ronald Regging]

You really don't seem to have a grasp of how TM law works. I looked up the first 10 and it's clear to see from these searches that you really dont. Theres a HUGE difference between a word mark and a design or stylized text mark. The 2 that are word marks, have absolutely nothing to do with computers, they're for paper products.

Design or stylized text marks are TMs for just that, the design or stylized text and don't hold any exclusivity for the actual word... In fact, some of those records expressly say this, so I'm not sure why you would think otherwise. The word marks for the paper products would have absolutely no bearing in the context that you attributed in your original post, because they are exclusive to paper products only.

So again, I agree with Labrocca, you're just throwing out wild claims without having any real knowledge...

This is a place for users to lesrn about the law and get some helpful insight from other users... If you aren't knowledgable in this area, you're not helping by throwing out random, inaccurate claims. We're not all lawyers, but some of us still know alot about the law and we try to help when we can. Obviously, it's advisable to seek further legal counsel if you find yourself in a situation that requires professional services.

 

[labrocca]

That's why on many TM applications that involve an internet website, etc they will use the phrase "global computer network" instead of "internet".

How wrong is this statement Domagon?

I repeat

btw...not being able to admit your wrong is a sign of weakness and ignorance

You can argue all you want with me. You can even try to change the subject. What you stated was incorrect and misleading to the members here.

 

[Domagon]

Archived link to a news article (this is just one of numerous) regarding "internet" trademarks, and the recommendation by some to use "global computer network" instead...

http://web.archive.org/web/19970523...ews.com/inquirer/97/Mar/21/business/NET21.htm

Internet. A nice name, but who owns it?


By Elizabeth Wasserman
KNIGHT-RIDDER NEWS SERVICE


There's another new problem with the Internet.
Somebody owns the name.

Internet Inc., of Reston, Va., is in the midst of a two-year battle to protect its corporate trademark. The company, founded in 1984, has little to do with personal computers,
e-mail or surfing for information. It runs a network of automated teller machines and, in January, merged with another ATM network to become Honor Technologies Inc.

But seven years ago, Internet Inc. registered Internet as a trademark with the federal government, not knowing that the global computer network known by the same moniker would become so widely used. The company, however, still wants the exclusive right to use and license the Internet name.

``It's now a valuable mark,'' said Edward Kondracki, an attorney with Kerkam, Stowell, Kondracki & Clarke in Falls Church, Va., which represents Internet Inc. ``Events have happened since then that increased the value.''

Internet Inc.'s right to the mark has been challenged by a society made up of many of the technological founders of the Internet. One of the results of the fight is that the U.S. Patent and Trademark Office has delayed the petitions of hundreds of companies seeking to use the word Internet to trademark their goods or services.

Companies requesting trademarks in the burgeoning Internet field are being told they will face delays unless they use a more generic term, such as ``global communications network.''

``In trademark-office parlance, Internet is like one of George Carlin's seven dirty words: It cannot be spoken,'' said Sally Abel, an attorney with Fenwick & West in Palo Alto, Calif., who estimates that 90 percent of her clients have been affected by the trademark case.

A trademark is a distinctive phrase, word, logo or symbol that distinguishes one manufacturer's product from another's -- for example, Ford cars, McDonald's hamburgers, IBM computers.

Sometimes, however, trademarks can be lost when a term is determined to have become generic. For example, Bayer Corp. lost its trademark for the name aspirin.

Internet Inc. was awarded trademark protections in categories that include communications services, providing electronic data-transmission services, and electronic banking and retail marketing.

No one is sure how much longer the growing number of Internet cases will be delayed. The trademark office's administrative trial and appeal board has been reviewing the case of The Internet Society & Corporation for National Research Initiatives vs. Internet Inc. since it was filed in October 1994. Federal officials say the importance of the case -- nearly 1,000 petitions requesting marks involving the term Internet have been received to date -- has contributed to the delay.

The Internet Society, a non-governmental organization for global cooperation on the Internet, had tried to register its own trademark of the name starting in 1989. But those requests were denied, citing the Internet Inc. trademark. Now, the society is arguing that the term Internet is generic and so widely used, like aspirin, escalator and cellophane, that it shouldn't be owned by anyone.

``It's like car or telephone or television,'' said Patrice Lyons, the Washington attorney for the Internet Society. ``There are certain terms like that that are generally accepted to be descriptive of a particular thing. They shouldn't be subject to trademark restrictions. Internet is merely a descriptive term for the well-known network of networks.''

The question remains whether Internet is too widely used to be protected in a trademark.

``We advise clients that putting Internet in your name is like putting the word The in your name,'' said Palo Alto, Calif., attorney Mark Radcliffe. ``Internet is not protected for something related to the Internet, just as using PC is not protected in the personal-computer market.'

To be clear, I never stated "internet" TM was enforceable now, but it is a TM and furthermore, in the past, use of other terminology was used to describe the internet to avoid any potential, though admittedly remote, problems.

On a related note, I'm curious whether any of the attorneys who post at DNF post here - that would have likely helped in this thread, since everyone who has responded in this thread, to the best of my knowledge, including myself, are not attorneys.

Ron

 

[labrocca]

Yeah I am sure at one point there was an attempt to TM the name...that article was about 10 years ago...that's like ancient history on the web. One must assume they failed in their attempt to protect their so-called mark.

The company, however, still wants the exclusive right to use and license the Internet name.

Desire and reality aren't the same thing.

Also the last paragraph in the post says it all, it's from a lawyer, and directly contradicts your original statement in this thread.

``We advise clients that putting Internet in your name is like putting the word The in your name,'' said Palo Alto, Calif., attorney Mark Radcliffe. ``Internet is not protected for something related to the Internet, just as using PC is not protected in the personal-computer market.'