How to screen TM and avoid TM domains

[spinmydomain]

TM issue has become nonsense....When i search every word is TM hen how can we create new domain. Actually How TM works?

If any particular word is TM then automatically Registrars should screen and display TM alert....why because many people new to domain trading may not know all these issues and its confusing

ICANN should make some arrangement using some sort of software with all Registrars, so that we can get alert button about TM such as RED alert warning us against TM infringement.

Registrars should not allow registrants to register any such TM domain.

What is exact technique we know that any domain is TM?

any experienced one....i see impossible to build single domain now.

Example: If i try to register howtoearnxyz.com and see xyz in TM then can we register that domain if they fall under same category/goods/service like example MONEY.FINANCE,LOANS

We should all respect TM but there should be some mechanism to directly screen and avoid TM domains so that many people can save lot of time and money

Thanks

 

[sephirotica]

Go visit Markify.com, enter search term -> voila, all trademarks with specific term.
Alternatively, try googling the term you are trying to register, if you don't find anything trademark-ish on the first 3-4 pages chances are there isn't.

Just because a word is TM doesn't automatically mean that you cannot register the domain. You just need to stay away from the niche in which the domain is trademarked.

For instance Apple is a very popular trademark in electronics but there is nothing stopping you from registering applejam.com, applejuice.com, applefarm.com, applepies.com etc. As long as applejam is not a speaker surround system for mobile phones you should be fine

 

[spinmydomain]

Go visit Markify.com, enter search term -> voila, all trademarks with specific term.
Alternatively, try googling the term you are trying to register, if you don't find anything trademark-ish on the first 3-4 pages chances are there isn't.

Just because a word is TM doesn't automatically mean that you cannot register the domain. You just need to stay away from the niche in which the domain is trademarked.

For instance Apple is a very popular trademark in electronics but there is nothing stopping you from registering applejam.com, applejuice.com, applefarm.com, applepies.com etc. As long as applejam is not a speaker surround system for mobile phones you should be fine

I appreciate your answer and have little idea on what you have said.

I have searched MARKIFY , WIPO, USPOTO but i have some qs left in mind

Example: I want to create a site with name Applemarbles", so then i search "Apple" and we get 100's and even 1000's of Apple TM.

Next how do i search Niche/content related to Apple marbles or stones so to rule out any specific TM infringement. How can we check each term individually if i see many things similar.....takes lot of time and energy

Next some are seems to be live and some Dead. Can we ignore Dead TM things?

Next what is the single website to check world wide TM issues? WIPO and Markify are able to screen world wide TM issues?

USPOTO just screens US related TM?

Kindly answer my main question on the example with Apple marbles

 

[sephirotica]

As for TM scanning, if you look up a TM on Markify and look to the left-hand side of the screen you will find a "Select classes" link that allows you to define your search in the terms of looking for trademarks only in specific areas.
In the case of applemarbles I'd pick to scan "Toys and sporting goods" -> Apply -> 50 search results.
You must manually scan the results but its much easier to scan 50 results than 3000.
Also do same searches for "apple", "mable", "marbles" and "apple toy", "apple toys".

Yes, you will have to manually look over a list of about 200-300 names but apart from hiring/paying someone to do it for you I can't think of a better way.
Maybe someone with more experience can xD

Ofc, a google search for apple marbles does not hurt either. This will reveal that most apple marbles curently marketed are either sweets made with apples or just a non-trademarked fan picture of glass marbles with apple sign in them.

As for dead trademarks

Definition: A dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO that the owner of the trademark is in some way not keeping up with their trademark registration.
This would remove one barrier against your filing for the same trademark.

It does not necessarily mean that there are not other marks that the trademark examining attorney would cite against your application. Maybe another live trademark?

It is also possible to revive an abandoned application (for example, if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant later proved that a response was sent and the USPTO simply failed to match it with the file in a timely manner, then the case could be revived).

Also, regardless of the status of an application within the USPTO, the owner may still claim common law rights.

So basically, if the TM has been dead for a while its more or less up for taking.
If it has been dead for a short time I'd stay away as it could just be a mistake on USPTOs part.

And, yes, markify.com scans US trademarks (USPTO), European and German trademarks (CTM/OHIM) and wordwide trademarks (WIPO)

 

[Dave_Z]

Hehe, there's a lot of information to process. But here goes:

TM issue has become nonsense....When i search every word is TM hen how can we create new domain. Actually How TM works?

A trademark applies (at least) to a word or phrase, which a domain name contains. Because a TM distinctively identifies the source of a good or service in commerce, it also aims to prevent consumer confusion. (and subsequently TM infringement when domain names came out...)

If any particular word is TM then automatically Registrars should screen and display TM alert....why because many people new to domain trading may not know all these issues and its confusing

ICANN should make some arrangement using some sort of software with all Registrars, so that we can get alert button about TM such as RED alert warning us against TM infringement.

Registrars should not allow registrants to register any such TM domain.

If plans push through for the upcoming new extensions, ICANN and the registrars may do just what you said. I'm unsure if their "arrangements" will apply to current extensions like .com, though I doubt.

Registrars have an easier time screening out "unique and famous" TMs (NameCheap blocks domain registrations bearing PayPal, last I checked). Other than losing out possible revenue, of course, registrars can't realistically check every TM on the planet or how a domain name will be used.

What is exact technique we know that any domain is TM?

No all-in-one technique, but a few. You can search in Google like "word trademark" or "phrase trademark", or check any online TM database you find like Trademarkia.

Example: If i try to register howtoearnxyz.com and see xyz in TM then can we register that domain if they fall under same category/goods/service like example MONEY.FINANCE,LOANS

Unfortunately no. That's the point of a TM as I described earlier.

We should all respect TM but there should be some mechanism to directly screen and avoid TM domains so that many people can save lot of time and money

In an ideal world, hehe, we all have our way while respecting others. In the real world we all live in, well...

Nobody is born understanding all these things. While one may be upset at things he or she may not fully understand, taking time to do so can help more, don't you agree?

 

[spinmydomain]

Both Above

Thanks for answers. If that is the case then almost all domains are infringing TM. some way or other

need to think hard to create a single domain without issues...i don't know how resellers are doing their business with ease

---------- Post added at 04:38 AM ---------- Previous post was at 04:35 AM ----------

As for TM scanning, if you look up a TM on Markify and look to the left-hand side of the screen you will find a "Select classes" link that allows you to define your search in the terms of looking for trademarks only in specific areas.
In the case of applemarbles I'd pick to scan "Toys and sporting goods" -> Apply -> 50 search results.
You must manually scan the results but its much easier to scan 50 results than 3000.
Also do same searches for "apple", "mable", "marbles" and "apple toy", "apple toys".

Yes, you will have to manually look over a list of about 200-300 names but apart from hiring/paying someone to do it for you I can't think of a better way.
Maybe someone with more experience can xD

Ofc, a google search for apple marbles does not hurt either. This will reveal that most apple marbles curently marketed are either sweets made with apples or just a non-trademarked fan picture of glass marbles with apple sign in them.

As for dead trademarks
So basically, if the TM has been dead for a while its more or less up for taking.
If it has been dead for a short time I'd stay away as it could just be a mistake on USPTOs part.

And, yes, markify.com scans US trademarks (USPTO), European and German trademarks (CTM/OHIM) and wordwide trademarks (WIPO)

Good thing is that i just saw markify have options to filter categories-products and services ( like glass of water in desert)

---------- Post added at 04:49 AM ---------- Previous post was at 04:38 AM ----------

What about this below

Example: "INSURANCE"..I have searched in markify using insurance filter under services category.

I saw this one TM "INSURE MY TRIP"

List of goods and services include the following as per this TM "INSURE MY TRIP"
In International Class 36: Insurance comparison services, insurance brokerage services and insurance agency services, in the field of travel insurance.

So my question is can anyone book a domain by name 1. "INSURANCEYOURTRAVEL" OR 2. "INSURANCEYOURJOURNEY" as these do not include exact word INSURE and TRIP...words may differ but meaning is similar

Hope we can include insurance along with words like travel or flying or journey or adventures etc...

what do you think? TM means just words exact matching or words similarity.

How is this....we can create any domain name under Insurance comparison services, insurance brokerage services and insurance agency services, in the field of travel insurance. if the domain words do not match exactly with INSURE and TRIP. I am i correct?

How is this...we can use AppleXYZ.com domain name even though the word Apple is TM but the domain name AppleXYZ.com should NOT fall under Apple mobiles or related software...am i correct in my understanding?

Other example can we use Appleplastics.com (in plastic category) without any T issues bcz plastics are not covered under Apple goods and services

Kindly answer above qs with quotes pointing to each if possible. Hope this kind of discussion helps people to stay away from TM domains...thanks guys

---------- Post added at 05:46 AM ---------- Previous post was at 04:49 AM ----------

DATE MY FRIEND is TM related with below services under 41 and 45 classes of TM

Dating education services in the form of classes and seminars; Entertainment services, namely, conducting parties for the purpose of dating and social introduction for adults

Onlne dating services

So that means we should NOT create any domain phrase which include DATE fallling under dating events/services like 41/45? If it is true then there is no point in blocking all words...very very strict

---------- Post added at 05:53 AM ---------- Previous post was at 05:46 AM ----------

Next..If i see TREAT as TM in the services like Parties or Hotels gathering just for a treat ....then i should not use any domain which include TREATinmyhouse.com (example).

Then what are the words left to create a domain name...why Registrars are cashing including all TM words in their system...why courts or other organisation are not raising these issues...if certain words are TM then they should not be open to market....

 

[Dave_Z]

It's a bit hard to explain, but I'll try.

One answer to your questions is to look at the context or use of the TM. Especially if the TM is a phrase or set of words, you look at its overall context or use. TMs are specific and limited to their context/use.

Normally, one can't use a generic or common word/phrase as a TM in its generic or common description. So you can't use apple as a TM for the fruit, head and shoulders as a TM for a person considered above the rest, etc.

Instead, one can use a generic or common word/phrase in a distinctive manner. So apple is used to distinctively identify who is making those iPhones, head and shoulders is used to identify who is making that shampoo brand, etc.

Using the example DATE MY FRIEND: the phrase is generic or common in its context of dating your friend. However, the phrase is used distinctively in the context of offering education services, though about dating.

Again, it's all about context or use. It's easier to understand if one looks beyond the commonly-accepted description or definition of a word or phrase.

Courts don't resolve issues on their own. Someone has to bring up those issues to those courts, which TM holders (and some domain registrants) have done and been doing ever since. It happens that TM holders, especially the well-moneyed ones, can afford it.

 

[spinmydomain]

It's a bit hard to explain, but I'll try.

One answer to your questions is to look at the context or use of the TM. Especially if the TM is a phrase or set of words, you look at its overall context or use. TMs are specific and limited to their context/use.

Normally, one can't use a generic or common word/phrase as a TM in its generic or common description. So you can't use apple as a TM for the fruit, head and shoulders as a TM for a person considered above the rest, etc.

Instead, one can use a generic or common word/phrase in a distinctive manner. So apple is used to distinctively identify who is making those iPhones, head and shoulders is used to identify who is making that shampoo brand, etc.

Using the example DATE MY FRIEND: the phrase is generic or common in its context of dating your friend. However, the phrase is used distinctively in the context of offering education services, though about dating.

Again, it's all about context or use. It's easier to understand if one looks beyond the commonly-accepted description or definition of a word or phrase.

Courts don't resolve issues on their own. Someone has to bring up those issues to those courts, which TM holders (and some domain registrants) have done and been doing ever since. It happens that TM holders, especially the well-moneyed ones, can afford it.

Thanks

I have few examples to get some exposure

1. Apartments.com is a TM with services covered for rentals,apartment sarch,real estate etc

Then if available can we purcahse a domain houstonapartments...chicagoapartments...CITYapartments.com

2. TREAT is TM covers under restauats,hotels,partys,,,,then can we purchase domain with TREATatXYZcity.com ...TREATinXYZ.com etc

3.DATE is dating services TM...can we register example iwanttohaveDATE.com like domains which cover dating services including DATE word

4.INSURANCE is TM for insurances of all types like general insurance,travel insurance etc...then can we register doain for example justneedINSURANCE.com...takeinsurancebeforefly.com (travel insurance context) etc

5. Is it madatory to refelct services with in domain? Some domain names like HiXYZ are geenral things then how do we know whether it covers under particular services

For example if some one TM Hola word under chat or chat services then can we register HOLAguys.com which is a general term...other examples HOLAteacher.com HOLAfriend.com in chat services

plz reply with 1-5 serial order if possible..thanks a lot man

---------- Post added at 06:13 PM ---------- Previous post was at 05:58 PM ----------

Do you have a list of generic names where TM rules cannot apply and we can add prefix or suffix to them to get domain

Example Hotels dot com do not cover under TM as per court...so we can use prefix or suffix to that to get new domain name....here again i doubt prefix and suffix should also be trademark free under hotels category class

6.Example: FLYHotels.com is TM? when FLY is a TM and it also covers Hotels and restaurants in their services?

7.Next very good example DOMAIN is a TM and it covers all services including Domain registration etc...then how can everyone registering and using Prefix and suffix for Domain.com example Domaininvesting dot com, domaintools dit com, domainadvise dot com checkdomain dot com, instant dmain dot com etccc

 

[Dave_Z]

Sorry, spinmydomain, but that's as far as I can go.

If it somehow helps: ask yourself why you want to register a domain name. If you want to do that because, say, you heard or know some popular thing used in commerce, then you might get into trouble.

Again, try to look at the overall context of a phrase (possibly) used as a trademark, as in all its words rather than only one or two words of it.

 

[Kenny]

spinmydomain,

I must say, those are great questions!!!!

I think Dave Zan and sephirotica have covered a lot of it, but this is a tricky subject, and for the bottom line you may need a Domain Lawyer.


Welcome to NamePros and good luck.

Peace,
Cyberian

p.s.
Rep up'd

 

[Ms Domainer]

*

In many UDRP's, registering a domain in "bad faith" seems to be the most common reason for the filing of the UDRP in the first place.

If you register a domain with the intention of profiting from someone else's trademark, then that's considered "bad faith." So if you reg AppleComputerDriveCloud [dot] com and then set up a parking page filled with computer ads for Apple, then that would be bad faith.

There have been some bad UDRP decisions, such as "bad faith" rulings for domains registered before the trademark was approved, but, often, these owners were using questionable content on their pages. I don't agree with these decisions because it's so easy to park a domain and then forget it, and that's hardly bad faith, but that's the reality these days. This is one reason I'm shying away from parking.

It is a landmine out there, but other than avoiding obvious TM's, the only thing one can do before regging a name is to check USPTO.gov for official U.S. TM's (I'm not familiar with Markify) and Google and Bing for "natural" TM's (in use, but not officially TM'd).

If you worry TOO much, you can find yourself paralyzed with fear -- not a good trait for this biz.

*

 

[spinmydomain]

Sorry, spinmydomain, but that's as far as I can go.

If it somehow helps: ask yourself why you want to register a domain name. If you want to do that because, say, you heard or know some popular thing used in commerce, then you might get into trouble.

Again, try to look at the overall context of a phrase (possibly) used as a trademark, as in all its words rather than only one or two words of it.

Thanks...am new to this domain issues so trying to gather knowledge...obviosuly i will stay 10000miles away from TM products/services...My main intention is to know "how to develop a domain name with pure generic dictionary words without TM infringement"...that is the reason why a focusing more like can we use following terms like below...

insurance
dating
onlinegames
quickmoney....so on...

---------- Post added at 11:15 AM ---------- Previous post was at 11:10 AM ----------

spinmydomain,

I must say, those are great questions!!!!

I think Dave Zan and sephirotica have covered a lot of it, but this is a tricky subject, and for the bottom line you may need a Domain Lawyer.


Welcome to NamePros and good luck.

Peace,
Cyberian

p.s.
Rep up'd

Thanks but shall we really need a domain lawyer to develop domain names free from TM

I love to learn how to develop develop domain without any controversies...like i mentioned in above message can we use descriptive domains using dictionary words/generic words...can anyone suggest examples and websites/bogs with such info...thanks all guys...i want to give birth to domains which are clean and resell them to make money but i never prefer TM infringement even unintentionally/accidentally...i want to be a good person...suggest me some resources to help me developing domains free from TM

---------- Post added at 11:22 AM ---------- Previous post was at 11:15 AM ----------

*

In many UDRP's, registering a domain in "bad faith" seems to be the most common reason for the filing of the UDRP in the first place.

If you register a domain with the intention of profiting from someone else's trademark, then that's considered "bad faith." So if you reg AppleComputerDriveCloud [dot] com and then set up a parking page filled with computer ads for Apple, then that would be bad faith.

There have been some bad UDRP decisions, such as "bad faith" rulings for domains registered before the trademark was approved, but, often, these owners were using questionable content on their pages. I don't agree with these decisions because it's so easy to park a domain and then forget it, and that's hardly bad faith, but that's the reality these days. This is one reason I'm shying away from parking.

It is a landmine out there, but other than avoiding obvious TM's, the only thing one can do before regging a name is to check USPTO.gov for official U.S. TM's (I'm not familiar with Markify) and Google and Bing for "natural" TM's (in use, but not officially TM'd).

If you worry TOO much, you can find yourself paralyzed with fear -- not a good trait for this biz.

*

Thanks....as mentioned earlier i just want to learn how to vet domains and develop domains with out any TM issues but just want neat and clean things from controversies.

Note that i have no bad faiths and don't want to get in to TM issues and never do this...am just asking all qs because am new to this and trying to learn how to avoid TM things, so asking you all qs in various scenarios and at the same time learning basics via forums/articles

I want to learn basics which can help me to develop good domains free from issues....my intentions are good to learn about domains so i think i should not fear and thanks for suggestions...i don't want to steal or develop domains with bad faith

i read some sources so far like igoldrush and some domain forums....main headache searching for TM scrutiny....eating time..so better develop some skills like descriptive generic name domains which are good as i read in some domains blog/article.

I wish you all guys suggest me few resources and if possible help me about examples which are free from TM infringement.

I still have doubt whether we can use terms like insurance,games,dating etc in our domains...how do we know they are generic etc...sorry for some repeats..thanks again

 

[bmugford]

TM law is extremely complicated, but a simple rule of thumb I use is - Would this domain exist without the trademark?

Would a domain like GoogleSearch.com, YahooMail.net, AppleIpads.com be registered without the famous TM? No.

Would domains like ChicagoApartments.com be registered? Yes. It is merely a descriptive term that no one entity can claim rights to.

TM that are simply descriptive terms are generally not enforceable for the generic use.

Brad

 

[spinmydomain]

TM law is extremely complicated, but a simple rule of thumb I use is - Would this domain exist without the trademark?

Would a domain like GoogleSearch.com, YahooMail.net, AppleIpads.com be registered without the famous TM? No.

Would domains like ChicagoApartments.com be registered? Yes. It is merely a descriptive term that no one entity can claim rights to.

TM that are simply descriptive terms are generally not enforceable for the generic use.

Brad

short n sweet reply....thanks...can you throw somelight on terms like prefixhotels.com prefixinsurance.com,xyzdateing.com, xyzbank.com... where prefix can be any normal generic word

I think better to focus on descriptive generic terms to stay free from TM issues...but any learning guide for this descriptive generic domains....g8..thx

---------- Post added at 12:04 PM ---------- Previous post was at 11:53 AM ----------

To all good people above

Why all ICANN-accredited registrars do not have a TOOL which can fix domains which have TM infringement while we Register New domains

I feel there should be a CATEGORY box (like Nice / WIPO 45 class) next to DOMAIN.com before we Register and TM alert mechanism.

Example : A Registrant want to create a domain name under XYZInsurancedeals.com and CATEGORY he obviously selects Insurance, then when he click Search button then system must automatically alert us whether the entered domain name is TM infringed or not.

This mechanism is not impossible for registrars and for concerned domain officials so that we can save lot of time and energy and there wont be any court/legal cases at all.

why this is NOT happening? Why Registrars are allowed to release domains with TM infringed...why not Registrars are equally responsible for TM infringements?

 

[Dave_Z]

Why all ICANN-accredited registrars do not have a TOOL which can fix domains which have TM infringement while we Register New domains

Because, as you may imagine, TMs are complex. Not to mention that, again, registrars can't realistically check every TM on the planet or every use of a domain name.

A domain name alone doesn't automatically imply TM infringement.

I forgot to mention that TMs don't have to be registered as long as they're used in commerce. That's another reason why this whole thing is complex.

I feel there should be a CATEGORY box (like Nice / WIPO 45 class) next to DOMAIN.com before we Register and TM alert mechanism.

Example : A Registrant want to create a domain name under XYZInsurancedeals.com and CATEGORY he obviously selects Insurance, then when he click Search button then system must automatically alert us whether the entered domain name is TM infringed or not.

This mechanism is not impossible for registrars and for concerned domain officials so that we can save lot of time and energy and there wont be any court/legal cases at all.

Not impossible, but likely not practical either given the (already) complexity of TMs. If a registrar does what you say above, that will limit your ability to register any other domain name you desire, too.

why this is NOT happening? Why Registrars are allowed to release domains with TM infringed...why not Registrars are equally responsible for TM infringements?

Again, because...it's complicated. Your other question could also be said of why manufacturers are not held equally responsible for products that (unintentionally) hurt people.

You could remain frustrated at the whole thing. Or, you could make the best and most of what you can. That's up to you.

 

[spinmydomain]

Because, as you may imagine, TMs are complex. Not to mention that, again, registrars can't realistically check every TM on the planet or every use of a domain name.

A domain name alone doesn't automatically imply TM infringement.

I forgot to mention that TMs don't have to be registered as long as they're used in commerce. That's another reason why this whole thing is complex.



Not impossible, but likely not practical either given the (already) complexity of TMs. If a registrar does what you say above, that will limit your ability to register any other domain name you desire, too.



Again, because...it's complicated. Your other question could also be said of why manufacturers are not held equally responsible for products that (unintentionally) hurt people.

You could remain frustrated at the whole thing. Or, you could make the best and most of what you can. That's up to you.

I appreciate your answer and i agree to great extent but why registrars at least try to use the mentioned alert tool so that to some extent feel more attentive while registering domain.

They can make a note that the list is not complete. At least we may have some benefit if not 100%. what do you say?

I think complexity at registrar level is relatively better than at courts level, so by this tool at least we may avoid few controversies and can double check. Hopefully some solution will be out soon.

can anyone tell generic name list which can used with out TM issues. Example: what about xyzinsurance.com and xyzhotels.com xyzfunding.com

I heard Namecheap is coming soon with such mechanism

 

[Dave_Z]

I appreciate your answer and i agree to great extent but why registrars at least try to use the mentioned alert tool so that to some extent feel more attentive while registering domain.

They can make a note that the list is not complete. At least we may have some benefit if not 100%. what do you say?

I think complexity at registrar level is relatively better than at courts level, so by this tool at least we may avoid few controversies and can double check. Hopefully some solution will be out soon.

That's...really up to the registrar if it's worthwhile for them. Heh, I wish I can tell you how complex that was and can get during my previous work with a registrar. I don't recall their having tried some TM filter of sort, but they're no stranger to lawsuits involving TMs.

At any rate, we'll know soon enough when the TM clearinghouse takes effect among ICANN, registrars, and TM holders for the new extensions.

can anyone tell generic name list which can used with out TM issues. Example: what about xyzinsurance.com and xyzhotels.com xyzfunding.com

That's the thing: any word or phrase, even a generic one at first, can become a trademark. Whether or not that becomes one will depend on its context or use. Some of them even walk a (very) fine line.

I like bmugford's rule of thumb, though: short and sweet, as you said.

 

[spinmydomain]

hello all

do you think smartphones(com) is generic or TM?

Can we create a domain name with XYZsmartphone(com) or XYZsmartphones(com)

I still doubt why even products/services headings (Nice 45 categories) are TM? what is left to use for new people like me?

---------- Post added at 04:41 AM ---------- Previous post was at 04:39 AM ----------

That's...really up to the registrar if it's worthwhile for them. Heh, I wish I can tell you how complex that was and can get during my previous work with a registrar. I don't recall their having tried some TM filter of sort, but they're no stranger to lawsuits involving TMs.

At any rate, we'll know soon enough when the TM clearinghouse takes effect among ICANN, registrars, and TM holders for the new extensions.



That's the thing: any word or phrase, even a generic one at first, can become a trademark. Whether or not that becomes one will depend on its context or use. Some of them even walk a (very) fine line.

I like bmugford's rule of thumb, though: short and sweet, as you said.

I appreciate your help spending your valuable time answering my qs but still am Not convinced.....I think i should get used to this kind of complexities and slowly my brain gets mad over time....sucks time and energy

---------- Post added at 05:24 AM ---------- Previous post was at 04:41 AM ----------

Can we use some dictionary prefix to upcoming gTLD and create a domain in (com) to be safe from TM controversies.

Example: gTLD under category .generic we can see many names like rentals rent etc

Next under Money & Finance we can see .insurance .bank .broker .analytics

this means can we use good prefix and register XYZbroker.com XYZanalytics.com

what do u think?

 

[New2Domaining]

Lots of experienced domainers have already given some solid advice on this thread but I just came across it and would like to offer my two cents since you still seem somewhat frustrated…

You keep referring to “insurance” and “dating” as examples of words you feel make creating a trademark-free domain difficult. It seems to me that many of the questions you are expressing are because you are looking at the parts rather than the whole. A trademark provides protection for a specific word, phrase or mark in a specific category of use. As many members have already pointed out, commonly used words cannot be trademarked in ways that they are commonly used, so for the most part you can put aside questions about single words like insurance and dating (in isolation, for names related to their common uses). That means that most trademark questions will likely center around domains comprised of either:

• Uncommon or made up words like “Drexvach” in Drexvach.com and “Lurtchy” in Lurtchy.com (words I just made up)
• Common phrases like “Birds of a feather” in BirdsOfAFeather.com and “Insurance for kids” in InsuranceForKids.com.
• Uncommon or made up phrases like “Winter Insurance” in WinterInsurance.com and “Dating after 40” in DatingAfter40.com.

If I wanted to check the trademark status of all the example domains above I would not check the trademark status of each individual word in the domains, I would check the status of ENTIRE domain phrases like:
• “Drexvach”
• “Lurtchy”
• “Birds Of A Feather”
• “Insurance For Kids”
• “Winter Insurance”
• “Dating after 40”

I would NOT check the trademark status of the COMMON INDIVIDUAL WORDS like:
• “Birds”
• “Of”
• “A”
• “Feather”
Or
• “Insurance”
• “For”
• “Kids”
Or
• “Dating”
• “After”
• “40”

Look at the whole, not the parts. Checking for these specific phrases is pretty easy and quick.

As has been stated many times, trademark law is complex and context is critical. Using the advice to ask yourself “Is the phrase I want to register dependent on an existing trademark?” can be very helpful. If I wanted to register AppleRestaurants.com and RedAppleRestaurants.com and I find no trademarks for the ENTIRE domain phrases but I still have concerns because I know Apple computers have computer-related trademarks, I might ask myself “Do these restaurant-related domains benefit from Apple Computer’s existing trademarks? If the answer is no I might feel comfortable using them for dining establishments. If the answer is yes or if I still have doubts I would simply move on to a different domain.

You’ve stated numerous times that you do not want to infringe on someone else’s trademark. If you keep that in mind when considering domain names and use some of the basic due diligence techniques described in this thread you should be fine.

To address your question about Smart Phone - smart phone is a generic, category defining phrase. I THINK you should be able to register a modified version of it, as long as the modified version is not trade marked. For example, the phrase “Smart Phone Clinic” has a trademark so you should not register SmartPhoneClinic.com, even if it is available. I THINK the phrase “Blue Smart Phone Ladder” is not currently trademarked so BlueSmartPhoneLadder.com is probably free and clear.

Keep in mind I am not a lawyer but I play one in my mind. If you have specific trademark question always consult a qualified attorney because everyone here means well but we will not be in court with you.

Best of luck to you.

 

[Ms Domainer]

Safe Harbor Laws

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You ask why registrars don't offer tools for registrants to avoid TMs.

It is my understanding that registrars -- at least in the U.S. -- are protected by safe harbor laws, which simply means that providers (telephone companies, internet, registries, online auction sites like ebay, and registrars -- any user-generated site) cannot know every infraction of law (such as TM law) by their customers, and, therefore, are not legally responsible for what their members post or register.

Once the company incorporates tools in an attempt to weed out TMs, then it's quite possible that the registrar will LOSE its safe harbor protection. So it's likely that the registrars themselves will NOT develop such tools, for in this case, ignorance is bliss because the law supports it. For you, however, the registrant, ignorance is NOT bliss.

I'm not sure how the TM clearing house will work, but I'm fairly sure that it will be independent of the registrars, at least on the surface (if you know what I mean).

Your best bet: use the internet tools available to you NOW and make your own decisions as to whether or not you want to take calculated risks with domains that seem to sit on the fence.

Obviously, avoid major TMs altogether and do due diligence with all the others because the onus is completely on your shoulders.

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