Trademark: Interesting Scenario

[Grrilla]

Recently acquired intuit.biz, thinking to use as a non-electronic/scientific site, keeping content closer to the actual definitiion of intuit:
to apprehend by intuition , as in an education program/site.
Have been advised as to the trademark problems and issues and provided w/ this link by NP member Centerpoint (TX-Cp):

http://www.nameprotect.com/cgi-bin/...b=PTO&ss=Intuit

On page 3 at this link, there is a pending TM for intuit covering "organizational" uses which was filed recently (mid-2003) . I am assuming, this is in response to another site Intuit.org that is currently operating and is not part of Intuit Inc. (Incidentaly intuit.org is hardly what one would call a typical .org site.

My questions are these:
-Would Intuit Inc have had to file for a trademark to cover other uses not previously stated if intuit.org was in clear breech trademark law?
-Is it possible for another party to apply for an (intuit) TM covering different uses (other than those already covered) and gain TM rights? ie organizational use, informational/educational commercial use?
This is the first time I've run into these issues.

 

[Domainerz]

Hi,
Trademarks are registered for a particular 'Class' of goods or services. (For example 'Apple' can not be registered in 'Computer Software or hardware Class' but any food processor can register it in the class of 'Fruit Products like jam, jelly, juice etc.) It's always possible to register TM for a different 'Class' of goods or services. If you check TM database, you can see that 'Windows' was registered as TM for more than 740 classes of goods or services including, for example, the following organisation for Glass products:
SCOTT PAPER COMPANY (PENNSYLVANIA CORPORATION)
INDUSTRIAL HIGHWAY AT
TINICUM ISLAND ROAD
DELAWARE COUNTY, PA 19113
Now Microsoft can never sue the above party for any violation of their TM.
I think I made the point clear to some extent... did I ???

 

[Grrilla]

Very much so. Then in my particular case, if I found an appropriate niche for my term, trademarked it, and used it within the boundaries established for it as defined by its class, I would be legal. Correct? What is the catch and/or what are the obstacles?:?

 

[Anthony]

That is generally true. Your best bet is to ask a trademark lawyer to be absolutely sure. Of course, not everyone has a lawyer to ask, I guess.

 

[Grrilla]

Thanks for both replys. Try to get as much info as possible up front via posts and research, before the clock starts ticking. This post was the result of another post requesting an appraisal for the name, which recieved (rightfully so) several TM issue responses. If I had not taken it further, I would have given up on using the name. Now that the ducks are lining up, I'm considering whether or not it is worth the effort and expense of TM'ing and using it within a defined class.
.

 

[Anthony]

So you are going with the name or what?

 

[Grrilla]

Yo Anthony-
Haven't made up my mind. I actually have another DN w/ same potential problem. I've got so much going on, these names just aren't a priority right now. I have, however, received such differing opinion on the matter, that if I move on these names, will probably need a patent/TM attorney to handle it. So, backburner item unless they come after me and then, I will I'll get ahold of the Century City Law Firm that I have worked w/ in the past, and they will tell me who to go and see.

I should add, I'm not inclined to go to battle on this, but I'm not a muck, either. I have received enough letters from attorneys over the years, that, although another one would catch my attention, I wouldn't loose any sleep over it.

 

[Anthony]

Originally posted by Grrilla
Yo Anthony-
Haven't made up my mind. I actually have another DN w/ same potential problem. I've got so much going on, these names just aren't a priority right now. I have, however, received such differing opinion on the matter, that if I move on these names, will probably need a patent/TM attorney to handle it. So, backburner item unless they come after me and then, I will I'll get ahold of the Century City Law Firm that I have worked w/ in the past, and they will tell me who to go and see.

I should add, I'm not inclined to go to battle on this, but I'm not a muck, either. I have received enough letters from attorneys over the years, that, although another one would catch my attention, I wouldn't loose any sleep over it.

LOL! Well at least you have law contacts to figure it out. I don't know if it would turn out to be worth the trouble, though.

 

[Grrilla]

Anthony- I live for.cc!! ooops make that .biz or .org or one of those.

 

[Anthony]

Originally posted by Grrilla
Anthony- I live for.cc!! ooops make that .biz or .org or one of those.

LOL! Confused a little? :lol: