question TM name..

[DomainCairn]

one word exact name drug/pharmaceutical domains such as (for example):
xanax.org
lexapro.org
abilify.org
prozac.org
viagra.org
zoloft.org
...etc

If you did register a name similar to the ones above (in .net .org .info etc) what would be the best action to take to avoid any trademark problems? ....just let the name expire in X amount of months or something else? Or do you not see a problem with owning those names?

 

[karmaco]

I wouldn't buy them at all unless they were in existence before the name became the drug name.

After that point if the company had an interest in obtaining all the extensions they would have done so allready. Waste of reg fee and money JMO.

Plus as you mention, TM issue is bad all the way around. Have to list the domain without listing it etc.No one else but the brand is going to use those names successfully.

 

[DomainCairn]

well im sure someone could build a website or blog to help bring awareness/education to a variety of disorders such as depression or anxiety, impotence or schizophrenia. Especially if its a .org or .info. name.
I do see potential for use outside of just the companies that make the medication.
I just do not know if there would be any issue with that from a TM perspective.

 

[LovingLife]

You might be safe if you made an info site and never monetized it, but then what would be the point.

 

[Dominique]

Registering trademarked name related to pharmaceutical preparations is a really bad idea because of the following reasons:
- pharmaceutical products are widespread and well known around the world
- pharmaceutical companies have enough money to engage capable lawyers for all the legal support they need, and their legal teams are highly active in protecting their rights
- pharmaceutical companies are strongly motivated to protect their marks because the pharmaceutical industry is one of the most critical and competitive industry and the marketing aspect is very intense for many reasons
- the special nature of pharmaceutical market encourages registering distinguishing and recognizable marks, (such as xanax, prozac etc.) which are usually not generic terms and its not hard for its owners to prove bad faith registration in potential dispute

I dont say there are no end users for your domain, but Im afraid they would be an irresponsible amateurs talking about some specific pharmaceutical product or some propagandist who would do the same thing for money.
And its very likely they would not infringe only the tm rights, but also an other rights of the certain company.
If you are pointing on someone who would criticize the pharmaceutical products proffesionaly with arguments, they would not do this under the products name. They would use the other domain, for sure.
Also, be aware that listing your domain on a marketplace could be considered as using in a bad faith so be careful what you are doing.
And it doesnt matter if its .net, .org., info or some other extension because the tlds are disregarded under the element of confusing similarity test.

If this trademark stuff is too complicated for you and if you have any further questions, feel free to pm me.

 

[jberryhill]

the special nature of pharmaceutical market encourages registering distinguishing and recognizable marks, (such as xanax, prozac etc.) which are usually not generic terms

And this is what is particularly uninformed about this thread in general.

There is a system by which, when a new drug is introduced, the developer assigns a designated "generic" name to the drug, so that it can be generically referenced without using the trademark.

For each of these drugs, there is a generic name:

Xanax - alprazolam

Prozac - fluoxetine

Viagra - sildenafil

If someone wanted to blog about these drugs, or the related medical conditions, without giving the impression they are associated with the manufacturer, then there ARE specifically-designated generic names for them. Of course anyone knowledgeable enough to run a blog about these conditions and medications would know that. Domainers, not so much.

 

[DomainCairn]

Appreciate all the feedback and advice. This is exactly what I was looking to find out. Thanks!

So if you did happen to register a name like those and dont want any TM issues, would the best course of action be to just let the domain sit and expire in X amount of months?

 

[jberryhill]

Most of the large pharma companies engage services which monitor the TLD zone files for instant alerts to new string-matching domain names. Their IP counsel gets a daily/weekly/monthly report, and they decide which ones to file against. It is pretty much guaranteed that "if you did happen to register a name like that", like, you know, the way that people just happen to accidentally register exact match inherently distinctive trademarks, then by the time you are asking the question, it has been flagged already. By the time a year goes by, then you'll be hearing something from someone.

Your BEST course is to take it as a lesson learned, and see if there is some way that you can expressly delete the name at your registrar, without waiting for it to die a natural death. If you can't do that, then the next best thing to do is to simply make sure that the domain name is not resolving to anything - including not resolving to a registrar parking page. But, bug your registrar to see if you can have it deleted.

On edit: Oh, excuse me. I mean "my best course" since in your hypothetical the question was "if you registered" the name. These questions like "if you had done X" remind me of the sorts of questions that start with, "If my friend had unprotected sex and then woke up with an itchy rash the next morning, then is that something that will just go away on its own, or would my friend need to see a doctor? My friend was asking me, and I wondered whether you know?"

 

[oraclep]

I did that in 09 during the high of H1N1 and got lucky (or not) to registrar Tamiflu with info ending. Only TLD they did not purchase and within a week had a letter. Had the Registrar pull it from the account with the instructions provided in the email
Lesson learned

 

[Omar Negron]

Stay away from known TM's.

Not worth it. We made a dumb mistake with a TM before. I wrote a post on this while back that you can check out.

http://omarandwill.com/buying-trademarked-domain-names-dont-be-stupid-like-us/

-Omar