question Trademark/Copyright Question

[GoodIdeas]

Do you think the phrase "the gram" in a domain name could be a trademark/copyright infringement?

P.S: it's not for a social media app/site.

 

[Peter45]

Start with these

Global Brand Database

WIPO Madrid Monitor

then look up in the TM Database of your country.


That said, your question - imo - doesn't make sense because no domain name per se is a TM infringement, only its usage can be a TM infringement
Even if gram is a TM, thegram.tld is not necessarily a TM infringement. It depends on how you use that domain i.e. if you use that domain in order to target that TM or the company that owns that TM.

 

[GoodIdeas]

Start with these

Global Brand Database

WIPO Madrid Monitor

then look up in the TM Database of your country.


That said, your question - imo - doesn't make sense because no domain name per se is a TM infringement, only its usage can be a TM infringement
Even if gram is a TM, thegram.tld is not necessarily a TM infringement. It depends on how you use that domain i.e. if you use that domain in order to target that TM or the company that owns that TM.

First of all, thank you for the response.

So, for example, can you register something like thegramplus.com and use it for something to do with what "plus" is? But that you're also banking on the use of "the gram" as the slang/colloquial term for the popular picture-sharing app?

 

[Surya Giri Kurniawan]

Hotel is in many trademarked name. You will get problem if you registered TrumpHotel.xyz. But it is ok if you register Hotel.berlin as long as you don't put Trump Hotel, Hilton Hotel or Hotels.com in it. Hotel is a generic term, can't be trademarked. But if you target Hotels.com, Trump Hotel and Hilton Hotel in your Hotel.berlin website, it is cyber squatter activity, and you infringe their trademark

 

[GoodIdeas]

Hotel is in many trademarked name. You will get problem if you registered TrumpHotel.xyz. But it is ok if you register Hotel.berlin as long as you don't put Trump Hotel, Hilton Hotel or Hotels.com in it. Hotel is a generic term, can't be trademarked. But if you target Hotels.com, Trump Hotel and Hilton Hotel in your Hotel.berlin website, it is cyber squatter activity, and you infringe their trademark

Ok. So would a domain like thegramhotel.com be infringement?

 

[Surya Giri Kurniawan]

Ok. So would a domain like thegramhotel.com be infringement?

As long you don't put something about Instagram or trademarked Hotel, like Trump Hotel, it is ok. But to make sure, you have to check Trademark database. I don't know if Hotelgram already trademarked or not.

 

[VRdommy]

Do you think the phrase "the gram" in a domain name could be a trademark/copyright infringement?

P.S: it's not for a social media app/site.

Having or owning a name that is or could be a generic term should not be an issue, generally.

Let me give you some example, but know some of this stuff can be more complex than I can explain here without writing a book.

NIKE is a generic word. It is the 'god of victory'.
The company so named NIKE has a TM on file for specific goods or services that it declares is the mark of the company.

You should be able to use the term for purposes other than those listed in goods in services.

Owning a domain that does not resolve is not necessarily a violation.

Trademark has a long history that you should read on it's creation reasons so you better understand it.

Just because you have a name that is not in violation of a TM, still does not keep you out of trouble.
They can bring forth a number of actions such as UDRP that even if they loose, you may not be able to afford the fight to defend a domain name.

You have to weigh all this in the value of your actions.

Just because you have a name that does not 'clearly' violate any TM, does not mean anyone would want to buy it and take the potential lawsuit even if they can defend it. The process takes time some startup does not have.

How a domain is used is always a potential violation no matter the name. For if you misrepresent a product or service, you have an issue.

There is probably nothing more important than this topic that I encourage you to learn more about so you can better select and invest in the right names for the right reasons and have a sale-able or use-able name in the end. Reading TM legal cases as well as UDRP cases will help guide you with experience in the same. Getting direct advise in threads like this will not save you.

Get yourself familiar with the USPTO website and even try the Wikipedia page for the history of trademarks and you will be further ahead than most.

A general rule of thumb is 'you can not profit from the use of someone's mark'.

But the short answer to your question is, I can't tell without looking it up in the TM database which is something you need to start doing.

 

[GoodIdeas]

Having or owning a name that is or could be a generic term should not be an issue, generally.

Let me give you some example, but know some of this stuff can be more complex than I can explain here without writing a book.

NIKE is a generic word. It is the 'god of victory'.
The company so named NIKE has a TM on file for specific goods or services that it declares is the mark of the company.

You should be able to use the term for purposes other than those listed in goods in services.

Owning a domain that does not resolve is not necessarily a violation.

Trademark has a long history that you should read on it's creation reasons so you better understand it.

Just because you have a name that is not in violation of a TM, still does not keep you out of trouble.
They can bring forth a number of actions such as UDRP that even if they loose, you may not be able to afford the fight to defend a domain name.

You have to weigh all this in the value of your actions.

Just because you have a name that does not 'clearly' violate any TM, does not mean anyone would want to buy it and take the potential lawsuit even if they can defend it. The process takes time some startup does not have.

How a domain is used is always a potential violation no matter the name. For if you misrepresent a product or service, you have an issue.

There is probably nothing more important than this topic that I encourage you to learn more about so you can better select and invest in the right names for the right reasons and have a sale-able or use-able name in the end. Reading TM legal cases as well as UDRP cases will help guide you with experience in the same. Getting direct advise in threads like this will not save you.

Get yourself familiar with the USPTO website and even try the Wikipedia page for the history of trademarks and you will be further ahead than most.

But the short answer to your question is, I can't tell without looking it up in the TM database which is something you need to start doing.

Thank you for your valuable response. I appreciate the effort and the writeup. Very helpful.

 

[Peter45]

So, for example, can you register something like thegramplus.com and use it for something to do with what "plus" is?

I think you can, if the usage of that domain has nothing to do with the TM or with the company owning that TM.
I.e. if that domain gets used outside the Nice classification category for which that TM is registered in.

For example, can I register ebaybikes.tld and use it for something related with bikes?
I think I can, as long as that usage has nothing to do with eBay.

(not sure though, so I could change my mind tomorrow)

But that you're also banking on the use of "the gram" as the slang/colloquial term for the popular picture-sharing app?

Everything goes as long as one doesn't bank, or aim to, on the goodwill of the company owning the TM.

imo (and I'm a newbie!)


That said, a whole another question is how easy/difficult it can be for the domain owner/user to demonstrate that he wasn't targeting or banking on the TM. That's why, even if one has the best intentions, it's better to stay away from TMs.

 

[Surya Giri Kurniawan]

I think you can, if the usage of that domain has nothing to do with the TM or with the company owning that TM.
I.e. if that domain gets used outside the Nice classification category for which that TM is registered in.

For example, can I register ebaybikes.tld and use it for something related with bikes?
I think I can, as long as that usage has nothing to do with eBay.

(not sure though, so I could change my mind tomorrow)



Everything goes as long as one doesn't bank, or aim to, on the goodwill of the company owning the TM.

imo (and I'm a newbie!)


That said, a whole another question is how easy/difficult it can be for the domain owner/user to demonstrate that he wasn't targeting or banking on the TM. That's why, even if one has the best intentions, it's better to stay away from TMs.

You can't registered Ebaybikes.tld because Ebay is not generic therm and Ebay selling bikes.

Don't make a problem by registering something famous + everything like EbayBike.com, GucciBags.com, FacebookLottery.com, InstagramPhoto.com, BlogspotTheme.com, etc... Ebay is not in dictionary and Trademarked, and selling bike too...

It is ok to register generic therm in dictionary if you don't target the trademark company, like ApplePieRecipe.com, AppleWine.com. But don't try to register AppleWatch.com because Steve Job's Apple is selling watch.

 

[Peter45]

You can't registered Ebaybikes.tld because Ebay is not generic therm and Ebay selling bikes.

There is the Nice classification. Ca 40 economy's fields.
I don't know which category is bike production in, maybe it was a bad example.
The point is, the TM Ebay is not registered for all 40 categories of the Nice classification.
That means that if you plan to use the domain ebay.tld for usage within the categories of the Nice classification which Ebay is not registered in, e.g. category 1, you can register and use the domain Ebay.tld

imo

 

[Surya Giri Kurniawan]

There is the Nice classification. Ca 40 economy's fields.
I don't know which category is bike production in, maybe it was a bad example.
The point is, the TM Ebay is not registered for all 40 categories of the Nice classification.
That means that if you plan to use the domain ebay.tld for usage within the categories of the Nice classification which Ebay is not registered in, e.g. category 1, you can register and use the domain Ebay.tld

imo

 

[Peter45]

That's what I said, Ebay sell bikes, they don't produce them.

 

[Surya Giri Kurniawan]

That's what I said, Ebay sell bikes, they don't produce them.

Instagram is not producing photo, so can you register InstagramPhoto.tld? Or Amazon is not producing books? So can you register AmazonBooks.tld? No you can't... Or you can try especially FB Group, and UDRP is very likely land to your email shortly. Cheers

 

[Peter45]

Are you sure you would lose a UDRP if you register and use instagramsolarpanels.tld in order to produce and sell solar panels?
in a way that at no point refers in anyway to Instragram?

Think about Ferrari, the world famous sports car manufacturer.
How about ferrarirevolvingdoors.tld?
provided no references to Ferrari SpA?

You sure you would lose the URDP if selling bananas under the name lufthansavegetables.tld?
provided no references whatsoever neither to Lufthansa AG nor to flying, Germany... etc.?



I'm not saying these would be smart entrepreneurial moves. I'm the first one to say stay away from TMs.
All I'm saying is you argue as if the Nice classification would be meaningless. I'm not even sure you know what it is.

You argue as if those companies had the monopoly over the 4 letters word ebay, or the 9 letters word instagram or the 6 letters word amazon.
I firmly disagree with this idea.

 

[Surya Giri Kurniawan]

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