NewRegister.com vs Register.com - Trademark infringement ?

[nRnF]

NewRegister.com - Register.com = Trademark infringement ?

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Here is a part of the letter:
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EDITED - CASE CLOSED
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I would be thankful for any thoughts/tips how to act in this issue.

 

[RJ]

Yes, but I would assert that 'Register.com' should not be trademarkable and that their going after any domain that contains 'register.com' is unfair. Like I said, they are running the risk of getting their (weak) trademark invalidated.

Straight from USPTO
(source: http://www.uspto.gov/web/offices/tac/notices/guide299.htm)

V. Generic Refusals

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. See TMEP §1209.01(b)(12) regarding marks comprised in part of "1-800" or other telephone numbers. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks.


Example: TURKEY.COM for frozen turkeys is unregistrable on either the
Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the
Principal or Supplemental Register.


The examining attorney generally should not issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Absent such a claim, the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods or services. TMEP §1209.02.

Would you not consider 'Register' to be a generic term in the domain registration industry?

 

[vimkar]

off topic

well i believe isn't right , bur register.com will win.....

see windows versus lindows...... windows won.....
:bingo:


one more thing : theregister.com seems to be there for a long time without any problem

why ??

:wave:

 

[Dave_Z]

Would you not consider 'Register' to be a generic term in the domain registration industry?

Is there such a classification for it in the USPTO office? Or any trademark-
issuing office for that matter?

Then again, depending on the area's stand on "common law" marks, you don't
even have to register for one.

 

[RJ]

Would you not consider 'Register' to be a generic term in the domain registration industry?

Is there such a classification for it in the USPTO office? Or any trademark-
issuing office for that matter?

Then again, depending on the area's stand on "common law" marks, you don't
even have to register for one.

Regardless, it can be argued either way. I don't see how 'Register' is worthy of a trademark for the domain registration industry, but obviously the examining attorney felt otherwise when it granted the trademark. Ultimately it would come down to a judge's or panel's decision if the case against it were pursued.

 

[IAmAllanShore]

Ok, went and did a little more looking. A big problem with newregister.com is that it sounds like register.com has left, and rebranded themselves as newregister.com. It is confusingly similar because it sounds like an offshoot or extension of the real register.com, who has spent millions branding themselves.

The word "register" is not a magic a-bomb that means that nobody can register a domain with the word "register" in it, because it is a verb before it is a company.

-Allan

 

[Dave_Z]

Don't forget Registerfly.

 

[nRnF]

FOLLOW UP:

Hello all,
first I want to THANK YOU ALL for the research, postings and oppinions on this case.
It helped a lot.

You may understand, that I do not want to post here the details of the case resulution, as I beleive this is a issue between both parties.
All I can say is, that we don't went to fight it out and both parties are happy

 

[superprogrammer]

well i believe isn't right , bur register.com will win.....

see windows versus lindows...... windows won.....
:bingo:


one more thing : theregister.com seems to be there for a long time without any problem

why ??

:wave:

Because theregister.com has no competition with register.com so they have nothing to fear about

 

[ugnali]

Fight them 100%

this is just the case of BIG corporate company pushing around the little guy again. So what now, you cant register a domain name with the word register in them? This is bullshit. I own register.su (former soviet union) what are they going to sue me too?

Anybody want oldregister.com its still free :hehe:

 

[domdom]

no need to give the name up

telephone them and offer it, - $5k otherwise you are going to make a lot of bad pr for them, newspapers etc , large company intimidating small individual etc.

telephone cant be recorderd, just dont put the above in writing. say whatever you want over the phone.

they cant take the domain off you. register is a generic word, it is the only word possible. there are no alternatives to 'register' if you are talking about registering domains. so it means they cant own the word, even if they have a trademark.

your safe, dont give them anything except abuse on the phone. or give me the contact number and i'l do it for you

 

[wisconsin]

telephone cant be recorderd, just dont put the above in writing. say whatever you want over the phone.

Statments you make over the phone can be used against you during the dispute proceeding! That's why some attorneys ask/want you to call them when they first contact you complaining about a domain. I've seen WIPO and UDRP proceedings where telephone conversations were mentioned as a supporting grounds for bad faith and so forth.

Thanks,

 

[ExpertDomino]

So, what happened?

Edit: i see above post now, must of been blind!

 

[artkreator]

hmm so you got smth good.

 

[Veolus]

well atleast nothing bad happened lol

 

[domdom]

Statments you make over the phone can be used against you during the dispute proceeding! That's why some attorneys ask/want you to call them when they first contact you complaining about a domain. I've seen WIPO and UDRP proceedings where telephone conversations were mentioned as a supporting grounds for bad faith and so forth.

Thanks,

i don't think that is true. In most countries including all of Europe it is 'ILLEGAL' to record phone conversations. I imagine America being the democracy and freedom of expressions / liberty country that it is has the same law.

For them to state a telephone conversation in the wipo proceedings does nothing as they need to provide the evidence and forward these to the wipo. If they have transcripts or recordings, then they are breaking the law.

and then you have the fact that they have to prove its you on the tape. not someone they brought in to fake it.

Only the FBI or CIA can do things like that. Over and Over the wipo says they are not a court, and are extremely limited in what they can do.

Say what you want on the phone. It's completely safe.

 

[armstrong]

It is considered "wiretapping" to record phone conversations when one or both of the parties are unaware of the recording, hence illegal. However, a lot of phone systems now have a pre-recorded greeting that is prefaced with something like "this call may be monitored and recorded for quality review and other purposes" or something like that. I imagine that would make the recording admissible.

 

[nRnF]

It is considered "wiretapping" to record phone conversations when one or both of the parties are unaware of the recording, hence illegal. However, a lot of phone systems now have a pre-recorded greeting that is prefaced with something like "this call may be monitored and recorded for quality review and other purposes" or something like that. I imagine that would make the recording admissible.

100% correct !

 

[wisconsin]

100% correct !

Remember this is an administrative proceeding NOT a legal/court proceeding! And the two are different about usin/referring to phone statements to establish "bad faith"!

 

[jberryhill]

For them to state a telephone conversation in the wipo proceedings does nothing as they need to provide the evidence and forward these to the wipo. If they have transcripts or recordings, then they are breaking the law.

This is one of those "too screwy to respond in detail" kind of things. I don't know where people get some of the ideas that get posted here.

Suffice it to say....

http://www.arb-forum.com/domains/decisions/92974.htm
Representatives of the Claimant had two telephone conversations with the Respondent in April, 1999. In one conversation, the Respondent stated that he wanted $5,000 for the site. In the other, he increased his demand to $10,000.

http://www.arb-forum.com/domains/decisions/94308.htm
Respondent appears to have made every effort to address any concern of the Complainant and in a telephone conversation with the Complainant’s attorney even indicated that she would remove the term "business card"

http://www.arb-forum.com/domains/decisions/94430.htm
On January 28, 2000, in a telephone conversation between Complaint's attorney and Respondent, Complainant declined to pay Respondent's "investment costs" and reiterated Complainant's insistence that Respondent relinquish control over the domain name

http://www.arb-forum.com/domains/decisions/94860.htm
During a May 19, 2000 telephone conversation, the Respondent’s administrative contact agreed to transfer the domain name in question without any compensation. However, the Respondent later withdrew this offer. During a June 12, 2000 telephone conversation, the Respondent’s administrative contact stated that he was interested in selling the domain name in question for "no less that five figures."

http://www.arb-forum.com/domains/decisions/95417.htm
On July 11, 2000, counsel for the Complainant spoke with the Respondent by telephone. The Respondent indicated that he would be willing to discuss transfer of the domain names upon mutually acceptable terms.

There's a ton more, but you get the idea.

 

[mastodont]

Still cannot open
http://www.uspto.gov/web/offices/ta...es/guide299.htm)

 

[smadison]

Still cannot open
http://www.uspto.gov/web/offices/ta...es/guide299.htm)

obviously not. Try

www.uspto.gov/web/offices/tac/notices/guide299.htm instead.

Without the elipse.

 

[mastodont]

yes, of course!