Trademark question - Nouns and Adjectives. Same or Different?

[Michael M]

As a rule of thumb I stay away from any domain with a potential Trademark conflict, but have ran across a couple that I have wondered about...

I am going to use an example here that is only for "illustrative" purposes. This is not the domain/trademark in question.

Let's say that someone (if it were possible) has a trademark on the term Health Spa. Would the domain HealthySpa dot com be in any way in conflict with their trademark? Let's say we can safely assume the domain would be used or sold to someone who would be in similar industries, though their specialties could be different.

Two different words, similar meanings. Health is a noun, when Healthy is an adjective.

Thoughts?

 

[Cal2]

If they were both targeting the spa market, I'd consider them 'confusingly similar' enough that HealthySpa would be infringing. However, if HealthySpa was targeting a market not covered by HealthSpa and its TM - eg. HealthySpa is a restaurant that serves up healthy food - then I'd think HealthySpa would be okay.

A Canadian one of something of a similar nature for you, from some years ago: Jersey City(tm) forced Jersey Joe to quit using its name that it was franchising out because Jersey Joe were selling clothing, etc., which was what Jersey City was also selling. Was considered 'confusingly similar'.

 

[Cal2]

P.S. I'm not a trademark lawyer. Just had some dealings with trademarks in the past.

 

[Justin Matmor]

The trademark space is very complicated. Unless you provide specific examples you may not receive the advice you are seeking.

In general, if you registered a domain name similar to an existing trademark there is a likelihood the trademark owner could make a successful claim against your domain name, however it will depend on many factors whether such a claim will be successful.

 

[Michael M]

Those were pretty much my thoughts as well, I just wanted to see what NamePros had to say. I have not made any of these purchases but I've run across it in my two word domain searches and some of them were good names that I would have gotten otherwise.

 

[alcy]

no tm expert here at all, but far as I read it'll all boil down to WHEN you regged your domain.

 

[ZapNano]

TM process and its legalities are somehow confusing itself. Example: Enterprise.com is for renting cars; and it's probably trademarked for that activities? But yet, they are selling trucks? Trademarked for one business activity then later on expanding to another business... Using the same Trademark name. I guess this is legal, as long as you hold the .com=double.deeping.

 

[ISPCircle]

I agree with Cal2's advice.

I would like to show you the ICANN UDRP (Uniform Domain Name Dispute Resolution Policy) and point out that the 3 things the arbitration forum looks for is:

• is your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  
• do you have rights or legitimate interests in respect of the domain name; and
  
• has your domain name has been registered and is being used in bad faith.