Can the plural of a similar review site operate and not get sued for TM infringement?

[interlagos]

Take for example, NotebookReview.com which has been in operation for like a decade or more now. Let's say "NotebookReview.com" is a registered TM. Can you operate a laptop review site with the domain NotebookReviews.com (the plural) and not get sued and be forced to hand over the domain because they are confusingly similar? Basically I want to know if both NotebookReview.com and NotebookReviews.com can coexist as two laptop review sites? Thanks

-Interlagos

 

[Beezy]

If there will be brand confusion, then no. In your case, seems like there would absolutely be confusion and you would be infringing.

 

[ulterios]

Good advice by @Beezy there. You are not allowed to make money from someone else's Trademark, which includes making money because of Brand Confusion.

Some TM owners will go after everyone they can find who is violating their TM, a plural vs. singular is an easy target.

If you are looking to do a site that is similar to something else that you might be infringing on a Trademark, it's better to get your own unique name.

 

[interlagos]

But can you actually TM words that you would normally find in a sentence? That really baffles me if NotebookReview.com (note: this is an example) is allowed to lay claim to those two dictionary words put together. "Notebook Review" is, afterall, two generic words..

another example would be BikeRental.com vs. BikeRentals.com. So basically whoever registered the domain first and operated a site first trumps the other and the later registered domain owner is not allowed to use the plural for his/her bike rental business name?

 

[jamesau]

Generic domains are complex when it comes to trademarks so this is a tough one. Hypothetically if I was in a similar situation I wouldn't necessarily avoid building my website on the domain NotebookReviews.com even if there was a TM on NotebookReview.com, unless it was owned by someone who is proven to be a nuisance. Just having to deal with a TM complaint is enough to put most people off, even if they have a chance in a legal case.

 

[Dave_Z]

But can you actually TM words that you would normally find in a sentence?

Yup, though it depends on context. You can't "trademark" or use a (so-called) generic word as a mark in its generic context, though possible in an arbitrary or distinctive manner.

Plenty of examples out there.

 

[ulterios]

But can you actually TM words that you would normally find in a sentence?

Yes you can. Apple, a generic word is trademarked and it's even a Registered Trademark. However, when a generic name is Trademarked, it is Trademarked in a particular field/area/etc. and not just the word use in general.

The Trademark for the generic word Apple (owned by Apple Inc.) is in the field listed as "computers, computer software, computer peripherals".

 

[SirDrago]

I must admit I have skated on that grey line of "trademark" VS "fair to use act".

Without legal backing I wouldn't suggest it at all. Now if you do happen to have a lawyer up your sleeve some companies pay handsomely to make you go away.

Now if you lose in court you must understand that there isn't enough Vaseline to make that burning sensation go away.

 

[ulterios]

Now if you lose in court you must understand that there isn't enough Vaseline to make that burning sensation go away.

That's great, I love that tough and to the point honesty!

That made me laugh, because it is sooooooo true. You want to play with the big boys you have to be ready to accept the price you must pay if you lose!

Perfect way of putting that @SirDrago ! :D

 

[interlagos]

Yes you can. Apple, a generic word is trademarked and it's even a Registered Trademark. However, when a generic name is Trademarked, it is Trademarked in a particular field/area/etc. and not just the word use in general.

The Trademark for the generic word Apple (owned by Apple Inc.) is in the field listed as "computers, computer software, computer peripherals".

Yeah, the Apple example is an easy one to figure out. It is clear that there can only be one Apple in the context of computers/tablets. But for someone to TM two words that are the niche itself, I just can't wrap my head around how there can only be one Notebook reviewer that bases their business around the niche itself. Anyway, thank you for your advice... maybe I will let this go LOL

 

[ulterios]

You are most welcome. Good Luck in whatever you decide.

 

[interlagos]

I must admit I have skated on that grey line of "trademark" VS "fair to use act".

Without legal backing I wouldn't suggest it at all. Now if you do happen to have a lawyer up your sleeve some companies pay handsomely to make you go away.

Now if you lose in court you must understand that there isn't enough Vaseline to make that burning sensation go away.

Yeah, thanks to everyone here for their advice. I was just curious because I noticed a lot of domains out there where the plural or non-plural are in use with an established business in the niche itself while the other is just sitting.there for sale. So they will forever be for sale until someone has big pockets to take on the risk.

Examples include: BikeRental.com vs. BikeRentals.com, NotebookReview.com vs. NotebookReviews.com

 

[enlytend]

Look at the class(es) of goods and services the name is registered for. You can't use something that similar for the same class(es) of goods and services as the mark holder.

Trademark offices won't grant a trademark to generic terms being used for their generic meaning. If someone has been a granted a trademark, that means the office has determined it uniquely identifies the owner's goods and services in context of the registered class.

Trademark owners have to police their marks. If they allow infringement it weakens their mark and potentially opens the door to losing it.

 

[cmdomains]

I hold plural and singular of exact match .global (2 words) . My guess, it's a more complex situation as global can be included in a company name compared to 'com'. I might have to offer both at the same time or let one go before I opt for auction.

And how about something like "Accredited Divorce Financial Analyst" . I would think there's numbers of this type of analyst (and won't they all be accredited in some form)? Yet this mark is registered, probably sitting on a short version .com.

 

[enlytend]

And how about something like "Accredited Divorce Financial Analyst" . I would think there's numbers of this type of analyst (and won't they all be accredited in some form)? Yet this mark is registered, probably sitting on a short version .com.

Read the TM information, it's a certification mark. The mark is for the certification itself, not an individual practitioner. It belongs to the professional intitute that issues it.

 

[cmdomains]

^so anyone with the same service can register the mark? Im not sure I understand what you mean. Here's what I found:

http://www.trademarkia.com/accredited-divorce-financial-analyst-85934311.html

This is saying it's a word mark and that UPTSO has given this a trademark serial number.

 

[enlytend]

It IS a word mark, but it pertains to the certification this organization offers. It means no other organization can offer a certification with the same name.

If the financial planning group Wei Cheatham and Howe* wants to implement and offer their own certification for financial analysts who specialize in divorce, they have to call it something else.

From TESS: (uspto.gov)

Word Mark ACCREDITED DIVORCE FINANCIAL ANALYST
Goods and Services IC B . US B . G & S: Financial analysis services. FIRST USE: 20140203. FIRST USE IN COMMERCE: 20140203
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85934311
Filing Date May 16, 2013
Current Basis 1A
Original Filing Basis 1B
Registration Number 4686072
Registration Date February 10, 2015
Owner (REGISTRANT) Academy Association, Inc. CORPORATION NORTH CAROLINA 2222 Sedwick Drive Durham NORTH CAROLINA 27713
Attorney of Record Devon E. White
Prior Registrations 4192868;4294209
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "FINANCIAL ANALYST" APART FROM THE MARK AS SHOWN
Type of Mark CERTIFICATION MARK
Register SUPPLEMENTAL
Other Data The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the services provided have been performed by a person who has completed educational course work requirements and work experience requirements of the certifier, has completed examinations administered by the certifier in a satisfactory manner, and has agreed to adhere to the certifier's standards for professional responsibility, continuing education and other post-certification requirements.
Live/Dead Indicator LIVE

*not a real company. Any resemblance of the name to any existing firm is purely coincidental - and unfortunate!

 

[NameFu]

If it helps, both foreclosure.com and foreclosures.com are active domains in similar industries.

 

[Beezy]

If it helps, both foreclosure.com and foreclosures.com are active domains in similar industries.

Does either have an active trademark? I THINK that's the debate here...

I see Foreclosure.com applied for a TM in 2004 and it was declared dead in 2005. I assume someone challenged it.

 

[cmdomains]

If it helps, both foreclosure.com and foreclosures.com are active domains in similar industries.

I guess in this case, the distinct designs from logo to webpage help avoid conflict?