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question Trademark Advice Needed

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dustbin-beaver

Established Member
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On USPTO the term 'Metafi' is registered. There is a website metafi(dot)me. A mobile app company.

However, metafi(dot)net is a registered domain name but developed and a different company.

metafi(dot)co is also a registered dn and a developed NFT company.

How come these companies aren't infringing TM rights of first company?

Now, I bought a domain name called metafi(dot)finance. Am I breaking any laws since my registration encompasses the entire URL. Can a company register TM as 'metafi(dot)finance' ?

Any help would be appreciated.
 
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jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
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How come these companies aren't infringing TM rights of first company?

Could you stick around and take a short quiz?

Take a look at this airplane:

1232127899.0.jpg


Take a look at this fuel truck:

1628209255928



Look at this mobile dental clinic, and the dental office building behind it:

mobile-program-truck.767x554.webp



Now look at this lovely table saw:

maxresdefault.jpg



And as long as you are in the hardware store, how about picking up a faucet:

delta-porter-37984ob-roman-tub-faucet-1_27720171532238851860.jpg


The subjects shown these pictures have at least one thing in common. And if you look closely and think about it, they all have TWO things in common.

Quiz:

1. Are all of these things owned/operated/sold by the same company?

2. Are consumers likely to believe that they are? State briefly why or why not?

Bonus Points:

What is the remarkable "second thing" they all have in common and why? (and, no, it's not "they all have wheels." We're talking about trademarks.
 
Last edited:

forge

goodbye
Impact
8,522
What is the remarkable "second thing" they all have in common and why? (and, no, it's not "they all have wheels." We're talking about trademarks.
Corporate logos are surprisingly similar; of the last two anyway. Though all do incorporate the triangle.

Probably not what you were referring to.
 
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jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
Though all do incorporate the triangle.

Yep. The triangular shape of the Greek letter delta is also the reason why it is used for the silt deposit region at the mouth of a river. (And also why many businesses in southern Louisiana incorporate the word “delta” into their names)

in their respective markets, each of these DELTA businesses is also very well known.
 

dustbin-beaver

Established Member
Impact
494
Could you stick around and take a short quiz?

Take a look at this airplane:

1232127899.0.jpg


Take a look at this fuel truck:

1628209255928



Look at this mobile dental clinic, and the dental office building behind it:

mobile-program-truck.767x554.webp



Now look at this lovely table saw:

maxresdefault.jpg



And as long as you are in the hardware store, how about picking up a faucet:

delta-porter-37984ob-roman-tub-faucet-1_27720171532238851860.jpg


The subjects shown these pictures have at least one thing in common. And if you look closely and think about it, they all have TWO things in common.

Quiz:

1. Are all of these things owned/operated/sold by the same company?

2. Are consumers likely to believe that they are? State briefly why or why not?

Bonus Points:

What is the remarkable "second thing" they all have in common and why? (and, no, it's not "they all have wheels." We're talking about trademarks.

I think I got this but am still confused about the whole TM thing.

Quiz:

1. Are all of these things owned/operated/sold by the same company?
Answer: They are not owned by same company.

2. Are consumers likely to believe that they are? State briefly why or why not?
Answer: From a consumer's POV, as a consumer myself, I would say these have different brand recognition because these are brands in different industries. I see you what you're trying to do here.

Bonus Points:
What is the remarkable "second thing" they all have in common and why? (and, no, it's not "they all have wheels." We're talking about trademarks

Answer: They all have a triangle as a logo? Not sure about this one.

So That would mean I can register a domainname called Google airlines and it won't violate the search engine company google?
 
Last edited:

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
That would mean I can register a domainname called Google airlines and it won't violate the search engine company google?

Not all marks are the same. They come in varying degrees of inherent distinctiveness, and some marks are “famous”.

“Delta” has long been a dictionary word referring to a Greek letter, the mouth of a river, or a mathematical difference. In the context of trademarks, it is arbitrarily applied to a bunch of different businesses, within their own respective markets.

Something like “Microsoft” has never had any meaning apart from a made-up word that Bill Gates chose for his company. Things like “Microsoft”, “Verizon”, “AstraZeneca” - they are inherently distinctive because they have no meaning apart from their usage as trademarks. If you saw an airline called “Microsoft”, you might assume that the software company had something to do with it.

“Coca-Cola” actually started out as descriptive of two ingredients. But it has become so famous that If you saw it on a pair of pants, you’d be likely to think the pants had some relation to the soft drink company.

So, those are two examples of marks that are either inherently distinctive or have become distinctive because of widespread recognition, that the specific goods or services are not as limiting of what sorts of uses might be considered dilutive of those marks. A non-infringing use of a broadly distinctive mark is considered dilutive if it tends to erode the strong association of the mark with the owner in question.

Being one of the most valuable companies on earth, with a service that many people use several times a day, and which has entered the lexicon as a verb meaning to use that service, it is unlikely that an airline named Google would be a good idea.
 

Frans Citroën

Top Member
Impact
2,271
Not all marks are the same. They come in varying degrees of inherent distinctiveness, and some marks are “famous”.

“Delta” has long been a dictionary word referring to a Greek letter, the mouth of a river, or a mathematical difference. In the context of trademarks, it is arbitrarily applied to a bunch of different businesses, within their own respective markets.

Something like “Microsoft” has never had any meaning apart from a made-up word that Bill Gates chose for his company. Things like “Microsoft”, “Verizon”, “AstraZeneca” - they are inherently distinctive because they have no meaning apart from their usage as trademarks. If you saw an airline called “Microsoft”, you might assume that the software company had something to do with it.

“Coca-Cola” actually started out as descriptive of two ingredients. But it has become so famous that If you saw it on a pair of pants, you’d be likely to think the pants had some relation to the soft drink company.

So, those are two examples of marks that are either inherently distinctive or have become distinctive because of widespread recognition, that the specific goods or services are not as limiting of what sorts of uses might be considered dilutive of those marks. A non-infringing use of a broadly distinctive mark is considered dilutive if it tends to erode the strong association of the mark with the owner in question.

Being one of the most valuable companies on earth, with a service that many people use several times a day, and which has entered the lexicon as a verb meaning to use that service, it is unlikely that an airline named Google would be a good idea.

Hey John, thanks for always helping us understand TM's better like this.

I have a question, what if my last name is used in my domain name business: "Citroën Holdings".
Could this be a problem with the car company which my ancestry is related to, even if I'm not selling cars, and my logo is very different? Or is this a potential problem just like the example with the Coca-Cola one? Or is my last name the same case as the "Nissan" guy who owns nissan.com instead of the car company?
 
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jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
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I have a question, what if my last name is used in my domain name business: "Citroën Holdings".

Aux armes, Citroëns!
Formez vos bataillons!

2cv-Armoured-643-385.jpg


I would not pretend to understand French law. In the US, there are certainly many people named "Ford" who run businesses, and they use their name in those businesses. There is no absolute right to use your last name as a mark. If your name was "Ford" and you started selling cars, then that would be a problem.

The long saga of Uzi Nissan keeping his domain name, to no ultimate practical effect or benefit in his lifetime, is of course well known. In the UDRP, which is not tied to any particular national law, a person such as Mr. Anand R. Mani has been able to prevail in a dispute over Armani.com. But, I really wouldn't know how commonplace it might be in France for persons named Citroën, Michelin, or Chanel to run businesses using their names, or what the relevant legal principles might be.
 

Frans Citroën

Top Member
Impact
2,271
Aux armes, Citroëns!
Formez vos bataillons!

2cv-Armoured-643-385.jpg


I would not pretend to understand French law. In the US, there are certainly many people named "Ford" who run businesses, and they use their name in those businesses. There is no absolute right to use your last name as a mark. If your name was "Ford" and you started selling cars, then that would be a problem.

The long saga of Uzi Nissan keeping his domain name, to no ultimate practical effect or benefit in his lifetime, is of course well known. In the UDRP, which is not tied to any particular national law, a person such as Mr. Anand R. Mani has been able to prevail in a dispute over Armani.com. But, I really wouldn't know how commonplace it might be in France for persons named Citroën, Michelin, or Chanel to run businesses using their names, or what the relevant legal principles might be.

"Aux armes, Citroëns!
Formez vos bataillons!"

This made me chuckle haha

The thing is I do not live in France nor do I do business there (unless someone buys a domain from me who lives in Paris or so, domaining is international). My business will be registered in Aruba an island part of the Kingdom of the Netherlands, where I live.
 
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Addicted2Domains

New Member
Impact
2
If you have a domain name BEFORE a person trademarks a word or a phrase, they can not take the domain from you or force you to stop using it AS LONG as you are not talking about "their trademark/ product" at your website.

However, you can be sued and if you can't afford to go to court, they will take it from you anyway. (I know this from experience and have been on BOTH sides of this)
 
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