UDRP Should one trademark valuable generic domains in order to protect from UDRP?

[Yong1]

I would like to develop a generic domain and to possibly sell the site or domain once i get it somewhat developed.
Is it a good protection to TM the domain?

In addition, is it a good protection measure in general to TM valuable generic domains even if not developed?
Would it help against a UDRP or reverse domain hijacking?

Happy to hear your thoughts.

 

[ultradog]

You’d better speak to an attorney on TM law. -- the rest is my opinion. If your domain is not developed, how do you demonstrate your unique or specific business use of a word or phrase?


Trademarks aren’t the same as patents, I think. (which help protect a person’s original ideas). If you are using an ordinary generic word as your domain, why should you be permitted to trademark it and restrict other people’s use of it? Did you invent this word, for example?


The case of the company Envato provides a good example. Their original name, according to DNGeek.com, was Eden — which is a widely used name with religious connotations. Some countries refused to allow them to trademark this name, since it was in popular use and had already-established meaning. The company had to go find a made-up word to trademark as their business name.


Your best protection of a domain is probably developing it according to your own vision for that word or words. If someone tried to reverse domain hijack you later, your defense is that you’ve established a particular use of the word already with your site, and that use can be seen and tracked online.

 

[MapleDots]

You need to show proof of commerce before you can trademark something. Traditionally you have to show specific use for the trademark. So Apple has the trademark for music, computers, etc but not for Apple Fritters. Same goes for any domain you try to trademark. You must show commerce or intended commerce and you must aggressively defend any infringement or lose the right to the trademark.

All of that can be a bit costly to simply protect a domain. Best advice I can give you is to out the domain to use in a generic way and defend it if you ever need to. There are lots of experts on the forum here that can get you the best odds of winning a UDRP.

 

[xn--v4h.com]

Generic as in the name? My first thought is if the TM office approves.

 

[Yong1]

Thanks for the input.
As we've seen many times generics get trademarked even if they really shouldn't. However in most cases if I'm not mistaken they get trademarked with a picture or for some other class rather than for the actual generic meaning.

 

[jberryhill]

generics get trademarked

This is something of a contradiction in terms.

A word is not "generic" in some free floating sense.

I'd like to see domainers start putting the word "for" after the word generic.

As in:

"Apple" is generic FOR apples.

"Apple" is not generic FOR computers.

Is the word "apple" generic? That's not even a well-formed question. Whether it is generic depends on what it is being used FOR.

Many of the most well-known marks are what are called "arbitrary" marks. In other words it is a word which is "generic for" something, but not for the goods in question.

"TIDE" is generic for what the moon does to the water.

"TIDE" is not generic for laundry detergent. I believe it is the best selling brand of detergent in the US.

So, is the word "tide" generic? Again, it's a pointless malformed question in the first place.

Look around your home (or mom's basement or whatever)...

Just from where I'm sitting, I can see a "MONSTER" energy drink, a pair of "PUMA" athletic shoes, a "GIANT" bicycle, a bottle of "DAWN" dish detergent (I was de-greasing my chain), a bagel with "PHILADELPHIA" cream cheese on it, an "ASPIRE" vaporizer on my e-cig, a "MASTER" lock...

These words in quotes are all dictionary words. They are all generic FOR something - a monster, a puma, a giant, the dawn, and so on.

But "generic" is not an intrinsic property of a word - whether a word is "generic" depends on how it is being used.

That is why, when you look at trademark registrations, they list the goods and services that the term in question is a trademark FOR.

Yes, you can pick apples all day long and sell them, and nobody is going to sue you for calling them apples. But if you are selling computers, yeah, you're going to have a problem.

So I'm guessing the question in this thread is "If I have dog.com, should I get a trademark to protect my domain name?"

Well you can't have a trademark for "having a domain name". You can have a trademark for whatever goods and services for which the domain name functions as a trademark. If dog.com is going to, say, a PPC lander advertising things for dogs then, no, you aren't going to have a trademark and you aren't going to be able to register a trademark because "dog" is generic for things having to do with dogs.

But the flipside of that is that since "dog" is generic for dogs, then if you are USING the domain name for things having to do with dogs - such as a PPC lander with dog stuff on it - then nobody else is going to be able to successfully accuse you of abusing their trademark for "DOG". In other words, even if someone has a trademark for "DOG" as a brand of shoes, then if you are using the domain name dog.com for things having to with dogs, and not shoes, then you don't have a problem in the first place.

 

[NameAcquisitions]

When ^^ this guy posts, pay attention. It's $$thousands in good free advice every time.

 

[MapleDots]

When ^^ this guy posts, pay attention. It's $$thousands in good free advice every time.

Yup, you said it...... heed the advice of experts and take it for free when you can get it because when you need @jberryhill his services will cost you. I learned some of my most valuable lessons by reading his posts.

 

[jberryhill]

On a related note, there is something of an advanced strategy of filing trademark applications for the sole purpose of having the USPTO refuse them as generic.

The situation there would go like this:

1. I have dog.com and I use it to advertise stuff for dogs.

2. There is a TM owner for DOG brand shoes, whom I'm worried about.

3. I file a trademark application for dog.com for "advertising services for dog products".

4. The USPTO says "No f'ing way! That's generic."

In that situation, if the DOG shoe people come after me, I have a piece of paper issued by the US government that says my use of the domain name is generic.

But, there's something of a fundamental contradiction in trying to claim that your generic domain name "is a trademark" of your own, and then turning around when challenged and saying "but it's generic". So, in general, if you have a domain name which is truly generic for the purpose for which you are using it, then attempting to claim it as a trademark will, in general, harm your position more than it would help your position.

 

[Marshall]

This is something of a contradiction in terms.

A word is not "generic" in some free floating sense.

I'd like to see domainers start putting the word "for" after the word generic.

As in:

"Apple" is generic FOR apples.

"Apple" is not generic FOR computers.

Is the word "apple" generic? That's not even a well-formed question. Whether it is generic depends on what it is being used FOR.

Many of the most well-known marks are what are called "arbitrary" marks. In other words it is a word which is "generic for" something, but not for the goods in question.

"TIDE" is generic for what the moon does to the water.

"TIDE" is not generic for laundry detergent. I believe it is the best selling brand of detergent in the US.

So, is the word "tide" generic? Again, it's a pointless malformed question in the first place.

Look around your home (or mom's basement or whatever)...

Just from where I'm sitting, I can see a "MONSTER" energy drink, a pair of "PUMA" athletic shoes, a "GIANT" bicycle, a bottle of "DAWN" dish detergent (I was de-greasing my chain), a bagel with "PHILADELPHIA" cream cheese on it, an "ASPIRE" vaporizer on my e-cig, a "MASTER" lock...

These words in quotes are all dictionary words. They are all generic FOR something - a monster, a puma, a giant, the dawn, and so on.

But "generic" is not an intrinsic property of a word - whether a word is "generic" depends on how it is being used.

That is why, when you look at trademark registrations, they list the goods and services that the term in question is a trademark FOR.

Yes, you can pick apples all day long and sell them, and nobody is going to sue you for calling them apples. But if you are selling computers, yeah, you're going to have a problem.

So I'm guessing the question in this thread is "If I have dog.com, should I get a trademark to protect my domain name?"

Well you can't have a trademark for "having a domain name". You can have a trademark for whatever goods and services for which the domain name functions as a trademark. If dog.com is going to, say, a PPC lander advertising things for dogs then, no, you aren't going to have a trademark and you aren't going to be able to register a trademark because "dog" is generic for things having to do with dogs.

But the flipside of that is that since "dog" is generic for dogs, then if you are USING the domain name for things having to do with dogs - such as a PPC lander with dog stuff on it - then nobody else is going to be able to successfully accuse you of abusing their trademark for "DOG". In other words, even if someone has a trademark for "DOG" as a brand of shoes, then if you are using the domain name dog.com for things having to with dogs, and not shoes, then you don't have a problem in the first place.

Thank you sir for 'Trademark 101'
A lot of doubts got cleared today!

 

[jberryhill]

Your best protection of a domain is probably developing it according to your own vision for that word or words. If someone tried to reverse domain hijack you later, your defense is that you’ve established a particular use of the word already with your site, and that use can be seen and tracked online.

Bingo.

 

[consumers]

a bagel with "PHILADELPHIA" cream cheese on it

It is "PHILADELPHIA BRAND" cream cheese and not "PHILADELPHIA" cream cheese. I believe Philadelphia Cream cheese is descriptive of cream cheese made in Philadelphia. PHILADELPHIA BRAND cream cheese is actually made in NY and it is called "PHILADELPHIA BRAND" because Philadelphia was known for high quality food.

 

[jberryhill]

Word Mark PHILADELPHIA
Goods and Services IC 029. US 046. G & S: cream cheese. FIRST USE: 18800000. FIRST USE IN COMMERCE: 18800000
Mark Drawing Code (1) TYPED DRAWING
Serial Number 74111983
Filing Date November 2, 1990
Current Basis 1A
Original Filing Basis 1A
Published for Opposition July 16, 1991
Registration Number 1659932
Registration Date October 8, 1991
Owner (REGISTRANT) KRAFT GENERAL FOODS, INC. CORPORATION DELAWARE Kraft Court Glenview ILLINOIS 60025
(LAST LISTED OWNER) KRAFT FOODS GROUP BRANDS LLC LIMITED LIABILITY COMPANY DELAWARE THREE LAKES DRIVE NORTHFIELD ILLINOIS 60093

Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Susan H. Frohling
Prior Registrations 0392212;0777517;1364777;1367881;AND OTHERS
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20111011.
Renewal 2ND RENEWAL 20111011
Live/Dead Indicator LIVE

 

[Asfas1000]

3. I file a trademark application for dog.com for "advertising services for dog products".

4. The USPTO says "No f'ing way! That's generic."

Bodybuilding.com have TMs for bodybuilding stuff and Entrepreneur for several things around entrepreneurship, isn't that against the notion of generic terms ?

 

[jberryhill]

Bodybuilding.com has a Supplemental registration for apparel, and they also have a 2-F registration for sport bags and towels. They also have a figurative mark for other things.

They do not have a registration for "bodybuilding stuff"

 

[jberryhill]

Likewise, the flagship mark of "Entrepreneur" is for a magazine. Marks for magazine titles is almost its own world.

Take something like "GOLF". It's generic for the game of golf. It is not generic for "a magazine". Some of the best known magazines are, for example, "TIME", "PEOPLE", or, if you prefer "PLAYBOY" or "PENTHOUSE".

Those words - time, people, playboy and penthouse - are all dictionary words referring to the things they define. Can you advertise a rooftop condominium for a high-rise building and call it a "penthouse"? Sure. The mark for "PENTHOUSE" is for a periodical publication, not a rooftop condominium in a high-rise building.

Now, when you get to something like "GOLF", for the purposes of registration, the USPTO examining attorney is going to want to know..."Okay, so it's a magazine, but is it a magazine about 'golf'?"

And here's where domainers typically fail to grasp the difference between a "generic" term and a "descriptive" term, as applied to whatever it is the goods and services might be.

The word "GOLF" for "a magazine about golf" is NOT generic in that context. Instead, it is descriptive. There is a subtle, but extremely important, distinction between something that is generic, and something that is descriptive.

A truly generic term can never function as a trademark for the goods and services for which it is generic.

A descriptive term CAN function has a trademark for the goods and services for which it is descriptive, IF (a) it has acquired distinctiveness as a mark, through (b) longstanding, continuous and substantially exclusive use as a mark.

My usual example of that sort of thing is "AMERICAN AIRLINES". Are they American? Yes. Are they an Airline? Yes. But they've been at it since 1939, and in the relevant market everyone knows that "AMERICAN AIRLINES" refers to one airline in particular, and is not simply a general reference to airlines which are American.

The other good example of this is "COCA-COLA". Is it a cola drink? Yes. Does it contain a coca extract? Yes. In point of fact, the best known trademark on the planet started out as a descriptive indicator of its contents. But you'd have to be a complete idiot not to recognize that, through more than a century of continuous and substantially exclusive use, everyone has come to know that "COCA-COLA" refers to a particular brand of cola beverage.

And, lastly, can one find registered marks which might be invalid? Sure. Registered marks are found invalid and cancelled from registration all of the time. It's not an easy thing to do. So simply because "BODYBUILDING.COM" obtained a registered mark on a 2-F (acquired distinctiveness in a descriptive term) basis in "bags and towels" - after selling bags and towels branded that way for at least five years - does not mean that someone with a dictionary word as a domain name for a couple of months and who hasn't been selling anything branded with that word in the first place, is going to waltz into the USPTO and walk out with a registered mark.

So, picking up again with "GOLF". The goods are a magazine. The subject of the magazine is golf. So the word "golf" is descriptive of the magazine in that context, not generic. Upon having the examining attorney ask, "Yes, but is 'golf' descriptive of the subject of the magazine?", the answer is "It is. But we have been doing it for more than five years, are the only magazine called that, and people interested in golf know that "GOLF" magazine is indicative of our particular magazine, and not 'magazines about golf' in general."

 

[jberryhill]

And, putting it all together now, we return to the original question:

I would like to develop a generic domain....

The OP doesn't really say "develop for what". It requires one to assume the question is "I would like to develop a generic domain for purposes for which it is generic."

By definition, generic terms cannot be trademarks for the goods and services for which they are generic. Now, sure, through long experience, I can say that "some domainer's idea of what is 'generic'" is usually completely and utterly wrong, but you have to take the question the way it is asked.

The other thing we can assume by "I would like to develop" is that the domain name is not already developed. So, even if the underlying term is descriptive, instead of generic, for the unstated development idea, then we know from the start that it will not fly as a descriptive mark with acquired distinctiveness through longstanding use.

The second part of the question:

In addition, is it a good protection measure in general to TM valuable generic domains even if not developed

Doesn't even make any sense at all. Absent actual use of a mark in commerce as a trademark for some kind of goods and services then, no, in the United States one cannot obtain registration of the mark. One can APPLY on the basis of an intent-to-use the mark, but it still won't register until (a) it is approved and (b) one submits proof of use in commerce.

It should follow as an obvious consequence that an intent-to-use application is not going to work as a filing basis for a descriptive mark.