Trademark-domain lawyer sometimes advises NOT to register generic word domains

[StonePillar]

In How to Obtain a Domain Name that Does Not Infringe on a Trademark
by Charles Runyan, Ph.D., J.D. (domain name law attorney), Runyan advises why it could cause you big money and legal trouble if, for example, you registered a domain name with the generic words "white tuna."

Please check out the article and give your comments. This is interesting.

Thanks.

 

[bobadhut]

the problem here is that most every generic word has some sort of trade mark to it. its nearly impossible to find one without it. the key is to do your homework and ensure that you do not register in bad faith.

bad faith = In order to dispute another party's use of a domain name, a business must prove that the name is identical or confusingly similar to a previously registered trademark and that the other party has no legitimate business interest in it.

to make a long story short, do your homework. get to know what trademarks are out there for your name and how they are used and try not to step on another businesses foot. another key is to actually know what the different trademarks do and mean. dont rely on somone from forums like these for insight. most people dont know what they are talking about. they just seen a word that looks familiar and cry trademark issue.

 

[johname]

What he really wants is for you to do Step 5: "Hire a trademark attorney" because he gets paid to tell you not to reg white tuna lol

 

[exsedo]

What he really wants is for you to do Step 5: "Hire a trademark attorney" because he gets paid to tell you not to reg white tuna lol

Exactly.
And you would get better advice from this forum about Trademarks than you would from some spamming lawyer who is only after your money. :imho:

 

[Sparhawke]

John hit the nail on the head with that one, while it is a good idea to seek professional advice it would've had more impact if it wasn't simply a loosely veiled advertisement.

Also, that was written in 2001, much has changed with the way trademarks have evolved hasn't it? That companies cannot simply register random words and products and expect to have absolute authority and monopoly over them?

 

[enlytend]

I think he just chose that as a simple example to make a point to a legally-naive audience - that partial marks, even in the form of seemingly-innocent words embedded in a trademark, CAN potentially be a source of trouble.

Can't think of an example offhand, but people make that mistake often enough in this forum. And how many people don't "get" what "generic" means?

In real life, his example tm may have a condition on it (sorry - I forget what this is actually called) like "No claim is made for the use of the words "White Tuna" apart from the mark as shown."

The due diligence steps are still timely - of course nobody dealing in domainsmis going to pay for a professional tm search every time they register a name, but if you're sinking a lot of time and your life savings into building a business then #5 is sound advice.

 

[labrocca]

Why have I seen links to that site twice in the past 24 hours? It's old and crap.

 

[CurtisNeeley]

The use of a website to "trick" a visitor into clicking a link, like is usually the idea for "parked" or fraud "ad sites", will be ruled as deceptive advertising once the FCC begins to REGULATE the Internet content.

It WILL happen by next month and maybe even by next week?
I might just be delusional. Have you read the Communications Act of 1934 and tried to figure out WHY it is not done already just like it is for TV etc.
I doubt it, but if you did, what page was it on?

 

[Erdy]

That lawyer is telling BS. Thanks for letting me know with whom not to work if I need a trademark lawyer. His example is totally stupid and all he is trying to do is to use scare tactics to increase his business.

 

[enlytend]

FWIW, I know of a company who successfully got a tm on a name that was a color followed by a noun - the noun being the generic item.

Sent some big names scrambling when it went through too. It doesn't happen often, but it happens.

 

[Name Trader]

Unless I misunderstand you, there are tons of these examples. Red Lobster springs immediately to mind.

 

[enlytend]

Red Lobster springs immediately to mind.

Yep - that's similar, though I believe that would be considered a suggestive mark.

The one I'm thinking of was even closer to the descriptive/generic line than that - think Red Lobster for a lobster producer instead of a restaurant chain. One selling (among other things) a naturally-occurring variety of lobster with a reddish shell.

Multiple refusals on that tm application - then they finally produced a pile of documentation attesting that the term was associated with their brand and it went through.

My point being: even though the words "white tuna" aren't (afaik) an ACTUAL tm, the example's not as far-fetched as it seems.

 

[Dave_Z]

Also, that was written in 2001, much has changed with the way trademarks have evolved hasn't it? That companies cannot simply register random words and products and expect to have absolute authority and monopoly over them?

Yup. While some things changed, some "basics" remain the same.

Oh, and some parties give free chapters to help entice people to buy the
main e/book. Nothing necessarily wrong with that.