Case where keyword.extension is trademarked but extension word is disclaimed

[Grego85]

Hey Pro's,

I own a .network domain name which I have recently discovered is very similar to a trademark:

XXXX.network where the term: "The XXXX Network" is trademarked. The word "network" is disclaimed in the trademark. Does this mean I would be safe to use this domain name?

XXXX is a 4 letter very generic term.

Any help on this would be greatly appreciated

 

[enlytend]

If this "generic term" (something you put food on?) + "Network" = their trademark, I would stay away far from it. It obviously isn't "generic" when the 2 words are combined or they wouldn't have been granted the tm.

 

[jberryhill]

Quite obviously "xxxx.network" is going to convey the same commercial impression to consumers as the mark "xxxx network".

These things aren't based on some sort of mechanical rule about magic dot placement. They are based on whether the domain name is confusingly similar to the mark. Presumably "xxxx.network" doesn't have much utility for selling, say razor blades, and is pretty much by definition intended to suggest network services of some kind.

There is no "magic dot" rule of domain name disputes. Nobody would spend a moment wondering if the domain name Wal.Mart is or is not confusingly similar to the mark "Wal-Mart". If these people have a TM for "XXXX NETWORK" then I don't see how "XXXX.NETWORK" would be considered "different" by anyone.

 

[sandyhere]

But if you are using it in different field it should be okay. Non infringing use of trade marks is allowed. You can protect your name by not using it in trademarked field and avoiding direct asking to.origional trademark owner.
imo... not an expert in this.

 

[Grego85]

Thanks for your replies everyone, really appreciate it! I went ahead and asked my registrar to delete the name. It's too bad because it was a really nice name, and the trademark holder has done squat with it other than trademark it (like a squatter). It is trademarked in the same class/category as I want to use the name for. I was mostly curious about what the disclaimer part of the trademark means, but I think I have it figured out now.

I honestly don't understand how these companies get rewarded trademarks for such generic names and then don't even use them for much of anything. It's worse than domain squatting IMO.

Oh well.... Move on to the next name...

Thanks again for the help.

 

[jberryhill]

But if you are using it in different field it should be okay.

The TLD is ".network", which is not an appropriate TLD to use the domain name for, say, selling dog food.

A lot of the new TLDs are directly descriptive of a field of use, so this sort of "use it for a different field" notion doesn't make a whole lot of sense.