TM issue or not?

[binaryman]

Hi guys,
I am considering registering a domain name. A very close excample of the actual domain I wish to register is NetMobile24.mobi
However the name NetMobile24 is registered under all the generic extensions and most other country extensions. So we have NetMobile24.com, NetMobile24.net, NetMobile24.NL, NetMobile.Co.Uk and so forth. These are all the same company. They have registered NetMobile24.COM as the Trademark.( Note that the .COM forms part of the trademark. ) It is a figurative mark and shows the letters Net in Blue and Mobile24 in black and the .com part in small red letters underneath as part of the entire design(logo) This logo appears on all their websites. They have not got a TM on NetMobile24 nor has anybody else. (in other words without the .com part there is no TM registration on it)
So my question is will I run the risk of a TM issue here if I register the domain NetMobile24.mobi Will the absence of the .COM part in my domain make it SAFE for me to register? Or is the name NetMobile24 also protected by the TM even without the .com part of it?
According to what I read out of this following TM article I should be safe or am I reading it wrong?
http://www.mycorporation.com/newsletter/archives/Aug02.htm

What I read out of the following: Quote"If a proposed mark is composed of a merely descriptive term(s) combined with a TLD, the examining attorney should refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. This applies to trademarks, service marks, collective marks and certification marks.

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. Trademark Act §2(f), 15 U.S.C. §1052(f)."Unquote.

According to this the mark should have been rejected for a TM registration in the first place anyway.
I look forward to an answer and thank any of you in advance already.
Regards
Fred.

 

[AdoptableDomains]

I'd say they probably have a valid TM on the string without the extension. Not because it is or isn't registered, but because you say it's in use. They don't have to file a TM to have a valid one. The similar and logo image you reference as TMed and filed will probably weigh things heavily in their favor. Also the fact that the two word and number example given isn't exactly natural language to support a clear generic definition. If you intend to use it for similar services to what you apparently know what they do, that would be another strike against you.

BTW, generally the TLD is not considered as part of a registered TM except for some grandfathered TMs from before they decided that. However,if registering a logo, it may be included even if the TM doesn't consider it.

I'd find another name.

 

[binaryman]

Thanks for your explanation. Guess I will leave it alone then.