Question about trademarking domain name.

[Dimester]

If I owned the domain ReviewedLimos.com® and was able to trademark it.


I then registered 30 city names:

BostonReviewedLimos.com ®
Chicago ReviewedLimos.com ®
Miami ReviewedLimos.com ®
etc


Q.) Am I protected from others registering names of an unregistered city that I might want to register later. Is my trademark good for any:
city name ReviewedLimos.com®

 

[evertonian7uk]

IMO no, your using reviewedlimos.com as a TM

not cityname then your domain.

you can only register and protect the name you register as a TM,

what you could do here to save yourself a lot of time and money is simply use reviewedlimos.com as the main site, (nice keywords) then develope some in site way to review all the cities from one place, would save you a mint on regging all the city names

 

[uber]

mmm.... subdomins would be the way to go with that surely :blink:

you get 100 free at GD

http://Boston.ReviewedLimos.com
http://Chicago.ReviewedLimos.com
http://Miami.ReviewedLimos.com

 

[Dimester]

Ebay.com ® is trademarked


Is it ok to register the names below?

BostonEbay.com
ChicagoEbay.com
MiamiEbay.com

 

[Dave_Z]

Highly unlikely, considering that eBay is a uniquely famous mark.

 

[Dimester]

Highly unlikely, considering that eBay is a uniquely famous mark.

Why should their ® have more protection than ReviewedLimos.com® ?

 

[flamewalker]

IMO you would have a case against someone regging such a name, but you would have to be willing to possibly spend up to $5k each to protect your TM.

 

[AndyR]

Ebay has intellectual property rights to the site in addition to the name and this gives them greater protection, it is also uniquely recognisable as a brand. This is the advantage of brandable words. You could probably get away with MilwaukeeBay as it is two generic or geographical words containing ebay or even Tebay is a place but not recognisably infringing their name.

Your reviewedlimos content would be protected i.e. scripts and pictures, logos so you could pursue others on this basis.

I agree with the above, links to reviewedlimos.com/boston etc. from your main page would be a good way to develop and keep the TM on the name for all of your content

andyr

 

[Green Moon]

You probably have some rights, but it is not a sure thing. Since "Reviewed" has little or nothing to do with "Limo" there is probably little justification for someone incorporating your mark in their name. That may well give you enough ammo to take your battle to WIPO on the domain front rather than have to bring suit. That should be considerably shorter and less expensive.

 

[Dave_Z]

Why should their ® have more protection than ReviewedLimos.com® ?

I guess I should've put the words uniquely famous in bold. And it's because
that eBay is such a unique and famous mark that users who see a site bearing
that mark are highly unlikely not to associate that site with eBay, along with
eBay aggressively protecting their mark.

And your mark is only good for the words and class listed, and not necessarily
those bearing that and a city, state or so. Trademarks are meant to prevent
consumer confusion, not give carte blanche use to its registrant for any other
variations or uses.

 

[AstoundingDesigns]

IMO no, your using reviewedlimos.com as a TM

not cityname then your domain.

you can only register and protect the name you register as a TM,

what you could do here to save yourself a lot of time and money is simply use reviewedlimos.com as the main site, (nice keywords) then develope some in site way to review all the cities from one place, would save you a mint on regging all the city names

Absolutely agree, 100%. Good post, couldn't have said it better myself.

 

[Dave_Z]

Just thought I'd post these links as well since I just remembered them:

http://www.namepros.com/legal-issues-and-disputes/427898-can-someone-trademark-a-generic-term.html

http://www.namepros.com/legal-issue...out-getting-sued-over-domain.html#post2504014

 

[Dimester]

Just thought I'd post these links as well since I just remembered them:

http://www.namepros.com/legal-issues-and-disputes/427898-can-someone-trademark-a-generic-term.html

http://www.namepros.com/legal-issue...out-getting-sued-over-domain.html#post2504014

That was helpful!

 

[tricolorro]

If I owned the domain ReviewedLimos.com® and was able to trademark it.[/B] ReviewedLimos.com®

The 2 links Dave Zan gave you is more than enough...but if you want more...

here it is from the horse's mouth (USPTO):

http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120903m

Quiz for you after reading the material:

Which is trademarkable?

A.Honda.com

B.DiscountCars.com
--

Following your initial theme, which is trademarkable?

A.NewYork.Honda.com

B.NewYork.DiscountCars.com

This little quiz may put things in perspective for you, I hope.

Patrick

I want to amend my post above as I just remembered the Cheap Tickets
case in Canada a year or two ago.

A Canadian company that had a TM registration for the term "Cheap Tickets" tried to take away the CheapTickets.ca domain from the Registrant via a
dispute resolution service similar to the UDRP...and lost.

http://snurl.com/cheaptickets2


They then filed a court action but the Registrant of CheapTickets.ca filed
their own countersuit to have the Trademark declared invalid...and they won.

http://www.trademarkblog.ca/index.php?s=cheaptickets

A very nice summary is here:
http://snurl.com/cheaptickets

Excerpt:
The Federal Court of Canada has ruled that everyone has the right to sell "Cheap Tickets". In ruling that two registered trademarks, "Cheap Tickets" and "Cheap Tickets and Travel", should be struck from the trademarks registry, The Honourable Justice Barry Strayer decided that no one should have the monopoly over describing their tickets as "cheap".

and

"In his written decision released this week, Justice Strayer said that the travel agency admitted that it used "Cheap Tickets" and "Cheap Tickets and Travel" descriptively of the services that it provided, and that, "In effect these combinations are withdrawn from use in the commercial world in Canada by anyone other than the Respondent. I do not believe this should be permitted because I am satisfied that these trademark are clearly descriptive.""

What is distressing to me is that a company in the US that has trademarked an equally descriptive generic domain term, CheapTickets.com, and has successfully defended against other parties usage of cheap tickets in domain registrations.

See
http://snurl.com/CheapTickets3

Scroll down to:
Trip Network Inc. d/b/a Cheap Tickets, Inc. v. Sigfredo Alviera


Excerpt:
Complainant, Trip Network Inc. d/b/a Cheap Tickets, Inc., filed a claim against Respondent... for Respondent’s registration and use of the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names.

The Panel found that the disputed domain names were confusingly similar to Complainant’s CHEAPTICKETS mark, because adding the geographic term “cancun” did not overcome a finding of confusing similarity...

The Panel found that Respondent’s operation of a competing travel reservation services website virtually identical to Complainant’s website did not constitute a bona fide offering of goods or services ... The Panel further found bad faith registration and use...because Respondent was operating a travel services website in direct competition with Complainant, which also showed an intention to disrupt Complainant’s business. The Panel ordered the transfer of the disputed domain names from Respondent to Complainant."

So if you can trademark Cheap Tickets ,why can't you trademark other descriptive domain name?

I think Canada got it right: allowing TM registration of such a clearly descriptive nature effectively removes them from use by others in the marketplace and...

"no one should have the monopoly over describing their tickets as "cheap"

...or discount, best, bargain, etc.

Patrick