The Significance of “and” Versus “n” in Regard to Generic Trademark Issues

[New2Domaining]

Let’s say I want to register the domain WatchesAndRings.com and I would like to use it to sell watches and rings online (I will develop it). I don’t see a registered trademark in the trademark database for the name “Watches and Rings” but a Google search does pull up a brick & mortar retail store in Alaska that sells watches and rings with the name Watches ‘N’ Rings (not “and”); their domain is WatchesNRings.com.

I want to register and develop WatchesAndRings.com. As defensive registrations I would also like to register RingsAndWatches.com, RingAndWatch.com and WatchAndRing.com; traffic to these domains will be forwarded to WatchesAndRings.com.

Because WatchesAndRings.com and WatchesNRings.com are so similar I realize they could be confusing to consumers. But because “watches” and “rings” are generic words being used in their common context I think there should not be a trademark issue.

These are not the actual domains I want to register but they are good examples. Do you guys think I will be in the clear with these names since they are generic words being used in their common context?

Thanks in advance.

 

[alien51]

You only mentioned that WatchesNRings is a brick and mortar store in Alaska. You did not mention whether they own a trademark for it.

But supposed they do own a TM for it, then yes you are causing brand confusion. And yes, they will go after you. I would, if i owned a TM. What's the purpose of me paying an annual fee for my TM, just to let you put up a confusingly similar brand with a similar business? I will definitely file a UDRP against you for trademark violation.

In the WIPO case below:
http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0267.html
The panel agreed that "work-n-gear.com" and "wearngear.com" are confusingly similar. Take note that "wear" is not similar to "work", yet they were judged as confusingly similar.

So the bottomline here, is not the "generic-ness" of the name you used, but whether you are causing "brand confusion". You can do practical test for brand confusion, simply pretend to be a customer and see whether you can tell them apart. If you are having second thoughts deciding which one is which, then there is brand confusion.

When you are trying to argue about the "generic-ness", then you are actually challenging why he was granted a TM in the first place. Which is a futile case, since he already has a TM.



Disclosure: I am not a trademark lawyer.

 

[DU]

Based on limited information you provide should be ok based on the three conditions for UDRP (which is a good guide).

"The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;"

They likely have local rights to their store name. Depending on how generic it is, how they are registered, there is minor potential for issue. If they have a TM it gets more in their favor depending on commonality of business goal.

"The registrant does not have any rights or legitimate interests in the domain name;
and
The registrant registered the domain name and is using it in "bad faith"

You want to develop and sell watches/rings I presume so have legitimate interest and you aren't doing the registration in bad faith so there is no issue.

Potential issue + No Issue = Unlikely.

Biggest factors that change this is whether the store is more known that you indicate, the name is less generic than you indicate (has TM), and whether you actually intend to develop. You're the only one who can really answer the three-part question accurately and be able to defend those answers.

 

[New2Domaining]

I appreciate your responses. As far as I can tell, Watches ‘N’ Rings (WatchesNRings.com) does NOT have a registered or pending trademark. I’m not sure if someone could get a trademark for the name “Watches and Rings” to sell watches and rings because it so generic. Could someone get a trademark for the name “Phones and Computers” to sell phones and computers. Does anyone have any info about this?

I had never heard of Watches N Rings before I Googled the name I want to register and they seem like a relatively small, local store (though a nice looking local store). Their website does not include ecommerce and its purpose seems to be just to drive people to the physical store.

It is not my intention to infringe on someone else’s trademark and I do not want to benefit from the reputation someone else has established by confusing consumers. At this point I think I can develop and brand an ecommerce website that looks and functions very different from WatchesNRings.com so that there is no consumer confusion. Does anyone else have thoughts about this?

 

[alien51]

I’m not sure if someone could get a trademark for the name “Watches and Rings” to sell watches and rings because it so generic. Could someone get a trademark for the name “Phones and Computers” to sell phones and computers. Does anyone have any info about this?

"Cats and Dogs", probably not. But "Cats N Dogs", probably. Your problem starts if someone was granted a TM for "Cats N Dogs", if you own "Cats and Dogs", then you are the one causing confusion with the TM owner.

I had never heard of Watches N Rings before I Googled the name I want to register and they seem like a relatively small, local store (though a nice looking local store). Their website does not include ecommerce and its purpose seems to be just to drive people to the physical store.

During litigation, that's what you call being "aware" that your competitor exists. The judge would ask you why you chose the name, when you are "aware" that someone else is already using the name that is very similar.

At this point I think I can develop and brand an ecommerce website that looks and functions very different from WatchesNRings.com so that there is no consumer confusion.

But you will still be in the watches and rings business, right? A business that is similar to your competitor.

 

[Name Trader]

My suggestion would be to consult a TM lawyer with the real domains in question and your real plan for your website.

 

[Abdul Aziz R]

I have the same question with "in" and "n". some use "n" with an available "in".

 

[New2Domaining]

@Alien51 - The “Cats N Dogs” vs “Cats and Dogs” example was very helpful. Watches and rings are generic words but I suppose ‘N” makes the phrase less generic. Now I can see that if someone has a trademark for “Watches N Rings” how “Watches And Rings” could add confusion in the marketplace. There is no registered or pending trademark for Watches N Rings but that doesn’t mean there isn’t a common law trademark.

The solid ground I thought I was on seems to be eroding…lol

Does anyone have insight that may save my plan to develop this domain (other than using it in a different product category)?

 

[alien51]

Does anyone have insight that may save my plan to develop this domain (other than using it in a different product category)?

I don't know how you can use it in a different product category, because the words are very descriptive and specific.

If you are a businessman (not a domainer), you can use a different more unique brand name for yourself. Then use the words "Watches and Rings" on your website title and content (in other words, do SEO stuff). You'll soon realize you can rank on top of search results even without using generic keyword domains.

 

[enlytend]

I’m not sure if someone could get a trademark for the name “Watches and Rings” to sell watches and rings because it so generic. Could someone get a trademark for the name “Phones and Computers” to sell phones and computers. Does anyone have any info about this?

If they're selling watches and rings, they may not even be able to register a tm if they use an "n" - it would still be "descriptive." A TM has to uniquely identify the business or product,

USPTO will reject an application if (in their opinion) it is generic or descriptive... because those are not unique to a particular entity.

IF a company has the money to fight it and can convince them that the phrase DOES uniquely identify them, they could eventually get the tm. Very expense to even attempt it, with no guarantees.

(A subsidiary of a major jewelry corporation successfully did just that. It took them years, they were turned down 3 times for being "descriptive" before they finally convinced the PTO to let it go through. I can only imagine what it cost them!)

If you're serious about starting a business, you really should run this by your own lawyer...

 

[Name Trader]

None of us are lawyers here. We are only using our brain and experience in giving you our (domaining) advice. You have to take all this advice with a pinch of salt. As I said before, you really should be consulting a TM lawyer. That's the best additional advice I can give you.

 

[alien51]

If they're selling watches and rings, they may not even be able to register a tm if they use an "n" - it would still be "descriptive." A TM has to uniquely identify the business or product,

USPTO will reject an application if (in their opinion) it is generic or descriptive... because those are not unique to a particular entity.

Whether the brand will be granted a TM or not, is a totally different issue.

The question right now is, "suppose" (as in let's pretend) a TM was granted for say "Cats N Dogs" veterinary clinic. So if you launch a similar veterinary clinic business called "Cats And Dogs" with the same domain name, will you be infringing on the TM and causing brand confusion for the owner of "Cats N Dogs" ???

I gave an example above about a UDRP of a similar case, and the panel decided it was confusingly similar.

I think that was what the OP was concerned about.

I own a couple of domains myself of a similar genre. Like using "4" instead of "For". Somebody is running a business say "More For Less", and i am running my own business at "More 4 Less". My belief is that if there is no TM, then it's a fair game free market capitalism.

Yes, i know there's such a thing as "common law" marks. But such marks have restrictions and qualifiers.

And by the way....

I think this legal section, is not meant for legal advice. So let's just exchange views as ordinary non-lawyer mortals. We all know we need a true lawyer to get legal advice. Otherwise, if all we say here is "you need to consult a lawyer", then there is nothing to talk about.

Disclosure: I am not a lawyer.

 

[Name Trader]

I've got no problems with people having any relevant discussions in this thread, just so long as the OP knows this is not legal advice, and if he takes any advice from this thread, his actions may or may not be legitimate. It seems to me that the OP wrote a plea to save his plans to develop this domain, indicating that he might still proceed with his plans. For me, now is the time for him to get real legal advice, rather than advice from all the laymen giving advice in this thread (however interesting the discussions might be).

I also think if he is not prepared to consult a lawyer with his problems, he was never serious with the plans to develop this domain.

 

[alien51]

Since the beginning of my first post, i already declared i am not a lawyer.

No one else here posted the same disclaimers about themselves. I see stub already posted not once, but twice, to seek legal advice. Then enlytend also posted to seek legal advice.

That's 3 advice to seek a lawyer. I think that is more than sufficient reminder not to take any advice posted on this thread seriously.

But just to add more to the casual non-attorney discussions here, i see that there is a business called "Park N Shop". It looks like a large business to me. I haven't researched if they have a TM for that, because the business is in Hong Kong. And they also own "Park And Shop" domain, but interestingly, they are using "parknshop.com" as their main business domain website.

I was wondering what if somebody else grabbed the "parkandshop.com" domain and they put up a similar business, would the "parknshop" owner try to file a lawsuit? Maybe i'll ask an attorney.

 

[DU]

Does anyone have insight that may save my plan to develop this domain (other than using it in a different product category)?

I thought you had plans to develop it into a shop - I didn't realize it was "development".

Imho it would cost you more $ to get a TM lawyer than to develop a fairly crappy website (which should be easily dumped on another domain as needed) should someone come calling.

If it's not obvious that it's a TM why concern yourself to this extent?
If it is obvious then don't develop it and throw it away.

The only time you should be concerned in this area, in my opinion, is if one or more of these is true:

*Domain is valuable generic
*You are clearly infringing
*You actually want to run a business

When you don't care:

*Domain is fairly worthless
*Domain is just for crapvelopment.

99.9 % of domains fall into the second category.

In the US the Federal Trademark is what protects you for INTERSTATE commerce. It's perfectly possible for there to be KrystalsSoupNSandwich in Utah and in Washington. The problem comes if one of them wants to expand into the other state.

---------- Post added at 08:19 PM ---------- Previous post was at 08:16 PM ----------

That's 3 advice to seek a lawyer. I think that is more than sufficient reminder not to take any advice posted on this thread seriously.

You can take them seriously, just not rely on them in a court.
Generally speaking very few cases actually require a lawyer.

The one that makes me laugh is the "consult your lawyer" like everyone has a $300/hr lawyer on retainer to manage their reg fee domains.

IANAL, BIKO

 

[New2Domaining]

Thanks for all the comments you guys have posted here. I understand that everything people post here is a personal opinion and not legal advice I should base decisions on. I know that I should seek the advice of a qualified attorney to get more definitive answers any trademark questions I have. Like most member here, I posted here to get some opinions from smart people and to help me look at the issue from different perspectives.

In regard to the casual conversation about “Park and Shop” and “Park N Shop”, my first thought would be to say that those examples seem different from the names I discussed because they are being used as verbs. Watches and Rings are nouns that describe specific categories of products. Park and shop are generic verbs not connected to a specific category of products (they can be nouns but in this instance I believe they are being used as verbs). So to me it seems that it would be difficult to argue that “Park and Shop” does not infringe on “Park N Shop” if Park N Shop was granted a trademark in a specific category of use. I think someone could make a stronger argument that “Watches and Rings” does not infringe on “Watches N Rings” (relative to the Park and Shop examples).

If someone got a trademark for Ringz (Ringz.com) to sell rings, I don’t think that they could argue that the owner of a store called “Rings (Rings.com)” infringes on it because rings is a generic description of a category of products and it would be used in its common context.

Despite the title of this thread, when I posted this thread I was not paying attention to the uniqueness factor “N” might add to Watches N Rings; I was mainly focused on the fact that watches and rings are generic terms for categories of products. While I still don’t have a definitive answer to my original question I have a new perspective to consider and I appreciate that.

 

[alien51]

In regard to the casual conversation about “Park and Shop” and “Park N Shop”, my first thought would be to say that those examples seem different from the names I discussed because they are being used as verbs.

Ok, how about "Donuts N Coffee" ???

It's an abandoned TM, but they were granted a TM nonetheless.

 

[DU]

Ok, how about "Donuts N Coffee" ???

It's an abandoned TM, but they were granted a TM nonetheless.

Unless there's one I don't see:

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DONUTS" AND "COFFEE" APART FROM THE MARK AS SHOWN

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DONUTS N'COFFEE" APART FROM THE MARK AS SHOWN

It's not a character mark

 

[New2Domaining]

As I said previously, I was not giving “N” the credit it MAY deserve for making a name unique and less generic. But looking at the Donuts N Coffee example raises a few interesting issues…

• You are correct that a trademark was granted for Donuts N Coffee. But there is a disclaimer in the trademark that says “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DONUTS" AND "COFFEE" APART FROM THE MARK AS SHOWN”. There is a picture of their logo in the trademark description and it seems like the trademark is for the mark or the logo. Do you agree?

• In addition, there are a bunch of other trademarks that include the words donuts and coffee. So it seems like the words “Coffee and Donuts” and even “Coffee N Donuts” are not off limits.

Looking at those examples makes me feel more confident about my ability to use WatchesandRings.com (though I know I still need to consult an attorney to be more certain).

Consider this…

Can a generic term be accused of infringing on a trademark (registered or not)? It seems to me that simply because someone gets a trademark that is similar to a common, generic term, that should not mean that individuals are no longer able to operate a business using the generic term (“Watches And Rings”, “Coffee And Donuts” and “Rings”). If a company chooses a name that may be confused with a generic term it’s not my problem (or the problem of someone who wants to run a business with a common generic term).

Thoughts?

 

[Name Trader]

I posted "consult a TM lawyer" for a second time, because New2Domaining asked for some final thoughts to save his plan to develop this domain. That was legitimate advice since he was about to embark on a full scale business venture. Instead of him just plunging ahead based on the advice in this thread. I clearly thought he was wanting to run a business on this domain. I agree with DU's post above.

---------- Post added at 10:28 AM ---------- Previous post was at 10:23 AM ----------

I think noun/verbANDnoun/verb and noun/verbNnoun/verb, whichever way around, a case could be made for trademark infringement, if in fact you are infringing on their trademark.

---------- Post added at 10:32 AM ---------- Previous post was at 10:28 AM ----------

ParkNShop are the biggest supermarket chain in HK. They choose to brand themselves as Park 'N Shop. Which is why they choose to use the shorter ParkNShop.com.