Question about word mark

[Tytus]

I am interested in a domain someone offered me and they told me it doesn't have any trademark issues, but when I started searching around I found that there is a wordmark on the letters, there is also a trademark on the product. Now I am confused if a word mark covers the letters domain or is a word mark just the design aspect of the name? This is a "first name" domain.

 

[Dominium]

As I understand it trademarks are of two types: word marks and logo marks. Word marks encompass the word that is trademarked, in any and all of its visual expressions. Logo marks are a subset of word marks, they only cover a particular combination of words and visual expressions.

So a word mark covers everything and a logo mark covers just that logo. If the name you're interested in has a word mark trademark, I'd steer clear unless you have a specific use for it in mind that doesn't impinge on the trademarked classes.

 

[Tytus]

So it's possible to actually wordmark / trademark a common first name?

 

[Dominium]

Yes but, like any trademark, protection applies only to specific classes. So it's possible to have more than one trademark for a first name like Jessica or whatever as long as the classes are different.

 

[Tytus]

Thanks for the help, so to clarify. If I buy this first name domain and put a website on it that has nothing to do with the wordmark and trademark descriptions I shouldn't have any problems. I've researched the tess database and found 4 wordmarks for the name, but non of them have anything to do with what I plan to run as my site. This should also protect me against any domain squatting claim

 

[Dominium]

This isn't legal advice but you should be fine as long as your business and/or website:

does not profit in any way from existing trademarks
does not impinge on the classes of other trademarks

However, if I were in your situation, I would take the added precaution of applying for a trademark under the classes relevant to my business. If the trademark is granted, either as a word mark or logo mark, then this will afford maximum protection for my intellectual property and a firm foundation for my business. If it's not granted, this may indicate a potential risk to my business from UDRP claims etc. I would then have to assess that risk and decide whether to proceed or not.

 

[jberryhill]

So it's possible to actually wordmark / trademark a common first name?

One of the largest retailers in Canada is "RONA".

It is also a female first name.

ANYTHING that serves as a distinctive identifier of the source or origin of goods can function as a trademark.

Your question concerns the scope of a mark, about which there are more crazy ideas among domainers that I've long given up hope of trying to broaden the general understanding.

Let's say I make a brand of dog food named "BULLHORN". I like that name because I have a picture of a big mean bulldog on the can. It's something of a regional brand, but in order to protect expansion of my market in the US, I register my mark with the USPTO.

Okay, fine, what does that mean?

Can you use "BULLHORN" to sell bullhorns? Well, yes, of course you can, because that's what bullhorns are called. My brand is for dog food.

Can you use "BULLHORN" to sell cat food? Unlikely. Even though my mark is for dog food, it might be reasonably anticipated that I would expand into cat food, and consumers might expect that "BULLHORN" brand cat food comes from the same people who make "BULLHORN" brand dog food, because it is a distinctive name for pet food or pet products in general.

Can I used "BULLHORN" to sell jewelry? Probably. There is no reason to expect that "BULLHORN" brand jewelry comes from the same people who make "BULLHORN" brand dog food.

Is that true for all marks? No. Some marks are "famous" - i.e. they are so strongly and exclusively associated with one party that any use is likely to dilute the value of the famous mark. For example, if you saw a pair of shoes that said "COCA-COLA" on the label, you might expect they have something to do with the Coca-Cola Company, even though they don't make shoes.

I've researched the tess database and found 4 wordmarks for the name

Owned by the same party, or by four different parties? The number of concurrent users of the same term as a mark is a significant consideration in the scope of a mark. Conversely, the extent to which a single owner has developed a "family" of marks is an indicator of increased strength and scope.

In the TESS database, the phrase "word mark" is merely an indexing term. Do you mean a mark with "standard characters" claimed?

 

[Tytus]

One of the largest retailers in Canada is "RONA".

It is also a female first name.

ANYTHING that serves as a distinctive identifier of the source or origin of goods can function as a trademark.

Your question concerns the scope of a mark, about which there are more crazy ideas among domainers that I've long given up hope of trying to broaden the general understanding.

Let's say I make a brand of dog food named "BULLHORN". I like that name because I have a picture of a big mean bulldog on the can. It's something of a regional brand, but in order to protect expansion of my market in the US, I register my mark with the USPTO.

Okay, fine, what does that mean?

Can you use "BULLHORN" to sell bullhorns? Well, yes, of course you can, because that's what bullhorns are called. My brand is for dog food.

Can you use "BULLHORN" to sell cat food? Unlikely. Even though my mark is for dog food, it might be reasonably anticipated that I would expand into cat food, and consumers might expect that "BULLHORN" brand cat food comes from the same people who make "BULLHORN" brand dog food, because it is a distinctive name for pet food or pet products in general.

Can I used "BULLHORN" to sell jewelry? Probably. There is no reason to expect that "BULLHORN" brand jewelry comes from the same people who make "BULLHORN" brand dog food.

Is that true for all marks? No. Some marks are "famous" - i.e. they are so strongly and exclusively associated with one party that any use is likely to dilute the value of the famous mark. For example, if you saw a pair of shoes that said "COCA-COLA" on the label, you might expect they have something to do with the Coca-Cola Company, even though they don't make shoes.



Owned by the same party, or by four different parties? The number of concurrent users of the same term as a mark is a significant consideration in the scope of a mark. Conversely, the extent to which a single owner has developed a "family" of marks is an indicator of increased strength and scope.

In the TESS database, the phrase "word mark" is merely an indexing term. Do you mean a mark with "standard characters" claimed?

Owned by separate parties with completely different uses. Yes there is 4 with standard characters too that relates to a physical products. Does this change the aspect? I have today to decide if I want to buy or let this go. I was going to use the domain for a social media type site and none of the tess descriptions are for anything online or even close to my idea. They are pretty big companies owning the marks though, that is where my fear lays.

Also I should mention that the name is more common than RONA. It's as popular as Tom, John, Jennifer etc

Also I paid for a verification of the domain and got this information back in the report:

We found several trademarks for "xxxx",

but they all appear to be character marks,

and not a trademark on "xxxx" in particular.

For usage of the domain name, we do not

foresee any issues with owing the domain

name, since it's someone's first name and

could be considered to be a 'generic word'.

There would be issues if the content on the

site that appears on the xxxx.com domain

name violates a trademark, but that is

unrelated to the domain name itself. We

are not attorneys, so any future use should

be cleared with a IP/domain name lawyer.

 

[jberryhill]

You actually paid for that nonsense? Wow.

Also I should mention that the name is more common than RONA. It's as popular as Tom, John, Jennifer etc

Well that's not really the point. "Tom's" is a brand of toothpaste. "Ben and Jerry" is a brand of ice cream. One of the largest sporting good's retailers in the US is called "Dick's". Those are all common names. It's not a question of "how common a name it is", but is a matter of whether or not "Ben and Jerry" on a tub of ice cream distinguishes it from other ice cream on the shelf, or "Tom" on a tube of toothpaste has the same effect in the toiletries aisle. "Bud" is a brand of beer, a name, or a common reference to marijuana. Trademarks are not about the magical properties of strings of letters, but what they do to distinguish goods/services in the relevant market.

 

[Tytus]

You actually paid for that nonsense? Wow.



Well that's not really the point. "Tom's" is a brand of toothpaste. "Ben and Jerry" is a brand of ice cream. One of the largest sporting good's retailers in the US is called "Dick's". Those are all common names. It's not a question of "how common a name it is", but is a matter of whether or not "Ben and Jerry" on a tub of ice cream distinguishes it from other ice cream on the shelf, or "Tom" on a tube of toothpaste has the same effect in the toiletries aisle. "Bud" is a brand of beer, a name, or a common reference to marijuana. Trademarks are not about the magical properties of strings of letters, but what they do to distinguish goods/services in the relevant market.

That's part of the report, the full thing has history of everything related to the domain. Plus boxing day 50% off.

Either way, my product will be completely unrelated to all the trademarks. The only way I can get sued is if someone comes after me just because they are a bully and have unlimited funds. I will have a website (anti cyber squatting). All the trademarks I checked are let's say in the category of "shoes", while my category is "genetics". My logo, colors, keywords everything will be different except the name.

 

[cmdomains]

^Any reason why you're changing from Social media to genetics? I've also had thoughts of creating a sort of people-powered site but not sure yet.

 

[Tytus]

^Any reason why you're changing from Social media to genetics? I've also had thoughts of creating a sort of people-powered site but not sure yet.

Actually I was just trying to show how different my genre is compared to the trademarked ones. A first name gives such a broad power of fitting with anything. I'm still planning on making a social media site. The trademarks for the name I found are:

The word marks I found ((4) STANDARD CHARACTER MARK) on uspto tess:

1. Clocks
2. xray machine not for medical purposes
   
3. Insoles for footwear
4. hot melt glue guns
5. Printed materials, namely, assessment examinations and printed examination materials in the field of optometry
6. Computer services, namely, providing online non-downloadable software featuring test questions and testing materials in the field of optometry
7. Computer software for use by institutional investors for portfolio management, operations, accounting, trading and compliance reporting.

While I want to run a niche social media site.

So if someone really wants to come after me, they will do it to drain me financially.

As for running a social media site, they are a pain to start alone. I ran one about 8 years ago and it was very hard work. It didn't launch well.

 

[jberryhill]

Only seven?

Given that what you posted allows one to search the goods/services in order to identify the name in question, you missed:

3739820
3755291
3325476
2543685
2615372
0920517
0817496

I'm going to guess that you have your TESS settings to display 50 results per page, and didn't click on the "next list" box at the bottom of the first page of search results, because there are certainly more than seven standard character marks for the term in question, including that last one which pretty much doesn't require a USPTO search, since it is the best-known and most heavily advertised of the lot for:

"VEGETABLE PRODUCT TO BE SPRAYED ON FOR COATING THE COOKING SURFACES OF UTENSILS USED FOR GREASELESS BAKING, FRYING, OR BROILING, TO PREVENT FOODS FROM STICKING"

I mean, really, it's the one that a lot of folks would know is a product sold under that mark.

Certainly, it is a name that can be used for a lot of things, but your search strategy could use an upgrade (and yes, is a standard acronym in genetics and a lot of other fields).

One thing you might look into with short terms like this one is to search "(letters) acronym" without quotes.

Acronymfinder.com for example, turns up 123 acronyms for the term in question. Now, mind you, a lot of online acronym resources don't distinguish between acronyms which are a trademark (e.g. IBM) versus acronyms which are generic (e.g. WTF), but they can be very useful resources for finding neutral subject targeting, so long as you conduct additional Google searching to assess whether the acronym is primarily used as a mark or generally within a field.