Question about TM'ed words with double meanings.

Labeled as question in Legal Discussion started by Mahogany, Jan 21, 2019.


  1. Mahogany

    Mahogany Top Member VIP

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    Im versed enough to know that I should stay clear of TM domains however I have a question that may be grey. (At least in my mind)

    Lets say the word had a double meaning like Apple... Hypothetically, what if .com dropped(I know it wont but this is for illustration purposes). Lets say an Apple farmer picked it up and started blogging about Apples and his farm. Could be be sued and the domain taken?

    Granted, this is an extreme case but what about similar terms where a company owns the .com but another extension is used by a person in an opposite niche where the word has double meaning?

    What are the ramification of owning such a domain, assuming the domain is used in an opposite manner of the Trademark's niche?
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  2. enlytend

    enlytend Moderator, NamePros Moderator Gold Account VIP Trusted Blogger ★★★★★★★★★★

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    To answer your question simply:

    A trademark identifies a unique provider of goods and services, it is not just a word, phrase or an image by itself.

    All tm registrations are linked to one or more classes of goods and/or services. The tm applies to use of the mark for things within that group of goods / services.

    Which is why
    Apple (computers)
    Apple Records
    Apple Bottom Jeans

    Can all co-exist.

    There are some other details, but basically that's how it works.

    You also can't tm a word or phrase for its generic meaning, so apple would always be OK to use for apples.
    Last edited: Jan 21, 2019
  3. BaileyUK

    BaileyUK Top Member VIP

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    Indeed, as enlytend has stated above. The trademark registration services prevent you registering a name that is the exact descriptive of goods or services.

    Though words, trademarked can gain a descriptive use just through common usage and familiarity and that is OK

    Just for example - try telling someone you Googled something, without them being fully aware you used an internet search engine. Most spellcheckers don't even highlight Googled as a spelling error these days
    Last edited: Jan 21, 2019

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