question Trademark question

[Jak Blak]

Please clarify this situation. I’ve been reading UDRP cases but haven’t found the answer to this yet.

Let’s say I register RiversideBakery.com. There is no registered TM for RiversideBakery, but there is already one company in some corner of the US known as Riverside Bakery. They do a lot of baking.

I have parked the page. It has ads for bread, bagels, cakes, etc. I do not bake anything. All I want is to sell a domain.

Since they are bakers and I am not involved in the industry, can they claim a TM just by doing business, say I am interfering with their business, and am acting in bad faith? Even though no TM is registered? I would probably not try to sell it to them. Maybe I would if they had almost no web presence. I would probably just wait for another baker to come along later. Thanks if you can comment.

 

[7363824]

Ok, let me preface this by saying I am not a lawyer and this is not legal advice....however my understanding is

A trademark does not need to be registered to be protected, but its much harder for them to show they should be protected. If it is some small regional business you might be fine. If you could honestly say you never heard of them before you got the domain and they aren't some company you should have I think the panel would take that into consideration.

When in doubt ask a qualified attorney who can actually provide legal advice.

 

[jberryhill]

can they claim a TM just by doing business ... Even though no TM is registered?

Can you own a dog, even if you don't have a dog license?

Yes, you can.

The most common misconception among domainers, by far, is the mistaken belief that trademark rights depend on whether or not the trademark is registered.

In the United States and many other places, you can have a perfectly good trademark without registering that trademark at all.

Trademark registration provides some extra advantages - public notice, legal presumption of validity and ownership, presumptive nationwide rights - but trademark registration is not how you "get a trademark" in the United States.

The way you obtain a trademark in the United States is by using a word, symbol, etc., on your goods and services that provides a way of distinguishing your goods/services from those of your competitors.

For example, I sell dog food. If I put "dog food" on the can, that doesn't do anything to distinguish my dog food from other dog food. If, however, I put "Berryhill's dog food" on the can, and assuming that there are no other prominent users of "Berryhill's" on dog food, then I have a trademark on the term "Berryhill's" for dog food if consumers recognize "Berryhill's" as distinguishing my dog food from other brands of dog food.

That's what a trademark is, and that's how you get one.

In your example, "Riverside" is the name of various geographic places:

Australia

• Riverside, Tasmania, a suburb of Launceston, Tasmania

Canada

• Riverside (electoral district), in the Yukon
• Riverside, Calgary, a neighbourhood in Alberta
• Riverside, Manitoba, a former rural municipality
• Riverside, Middlesex County, Ontario, a community in the municipality of Southwest Middlesex
• Riverside No. 168, Saskatchewan, a rural municipality
• Riverside, Ontario, a neighbourhood of Windsor
• Riverside, Simcoe County, Ontario, a community in the township of Tay
• Riverside, Toronto, a neighbourhood in Riverdale, Toronto, Ontario
• Riverside Ward, former name of River Ward in Ottawa, Ontario

United Kingdom

• Riverside, Cardiff, an inner-city area and community in Wales
• Riverside (Cardiff electoral ward)
• Riverside (Liverpool ward), a city council ward in England
• Riverside, Newport, a mixed residential and commercial area in South Wales
• Riverside (Norwich), a city neighborhood in Norfolk, England
• Riverside, Stirling, a district of the Stirling council area, Scotland
• Riverside, Worcestershire, a district of Redditch, England
• Riverside (music venue), in Newcastle upon Tyne, England, 1985–1999
• Riverside Stadium, in Middlesbrough, England

United States

• Riverside, Alabama, a town in St. Clair County
• Riverside, Arizona, an unincorporated area in Arizona
• Riverside, California, a city
  • Riverside City College
  • University of California, Riverside
• Riverside County, California, in Southern California
• Riverside, Humboldt County, California, a former settlement
• Riverside, Connecticut, a neighborhood of Greenwich, Fairfield County, Connecticut
  • Riverside (Metro-North station), on the New Haven Line
• Riverside, Delaware, an unincorporated community in New Castle County
• Riverside, Jacksonville, Florida, a neighborhood
• Riverside (Miami), a neighborhood in Miami-Dade County, Florida
• Riverside, Georgia (disambiguation), several places
• Riverside, Idaho (disambiguation), several communities
• Riverside, Illinois, a suburban village in Cook County
• Riverside, Indiana (disambiguation), several places
• Riverside, Iowa, a city in Washington County
• Riverside, Wichita, Kansas, a neighborhood
• Riverside, Kentucky, an unincorporated community in Warren County
• Riverside, The Farnsley-Moremen Landing, a historic farm and mansion in Louisville, Kentucky
• Riverside, Maryland (disambiguation), several communities
• Riverside, Cambridge, a neighborhood in Massachusetts
• Riverside (MBTA station), a terminus of a light-rail line in Newton, Massachusetts
• Riverside, Michigan, an unincorporated community in Hagar Township, Berrien County
• Riverside, a student neighborhood in Ypsilanti, Michigan where many Eastern Michigan University students live.
• Riverside (Duluth), a neighborhood in Minnesota
• Riverside, Forrest County, Mississippi, a ghost town
• Riverside, Lafayette County, Mississippi, a ghost town
• Riverside, Missouri, a city in Platte County
• Riverside, Jefferson County, Missouri, an unincorporated community
• Riverside, Reynolds County, Missouri, a ghost town
• Riverside, Montana, an unincorporated community in Ravalli County
• Riverside (Hamilton, Montana), a historic house in Ravalli County
• Riverside, Nebraska, a ghost town in Burt County
• Riverside, Nevada, an unincorporated community in Clark County
• Riverside, New Jersey (disambiguation), several places
• Riverside, New Mexico (disambiguation), several communities
• Riverside, New York (disambiguation), several communities
• Riverside (house), a mansion on the Upper West Side of New York City, New York
• Riverside (Grandin, North Carolina), a historic home in Caldwell County
• Riverside (New England, North Dakota), a historic hotel
• Riverside, Ohio, a city in Montgomery County
• Riverside, Cincinnati, a neighborhood in Ohio
• Riverside, Oregon (disambiguation), several communities
• Riverside, Cambria County, Pennsylvania, an unincorporated community and census-designated place in Stonycreek Township
• Riverside, Pennsylvania, a borough in Northumberland County
• Riverside, Rhode Island, a neighborhood in East Providence
• Riverside, South Dakota, an unincorporated community in Hanson County
• Riverside, Houston, a neighborhood in Texas
• Riverside, Texas, a city in Walker County
• Riverside, South Memphis, a neighborhood in South Memphis, Tennessee
• Riverside, Utah, a census-designated place in Box Elder County
• Riverside (Lyndonville, Vermont), a historic house in Caledonia County
• Riverside, Virginia, an unincorporated community in Roanoke County
• Riverside (Front Royal, Virginia), a historic home in Warren County
• Riverside, Spokane, a neighborhood that comprises the central business district of Spokane, Washington
• Riverside, Washington, a town in Okanogan County
• Riverside, West Virginia (disambiguation), several communities
• Riverside, Burnett County, Wisconsin, an unincorporated community in the town of Blaine
• Riverside, Lafayette County, Wisconsin, an unincorporated community in the town of Gratiot
• Riverside, Wyoming, a town in Carbon County

So "Riverside Bakery" might non-distinctively refer to any bakery in any of those places. Here are the Yelp listings for bakeries in Riverside, California:

https://www.yelp.com/search?find_desc=Cake+Bakeries&find_loc=Riverside,+CA

Now, sure, there might be some "Riverside Bakery" that thinks it is somehow entitled to that name - maybe they have an exceptional reputation or customer base, or maybe they even have a decent claim and have obtained registration (there's that presumptive validity which registration confers), but the burden is on them to demonstrate that your use of RiversideBakery.com has something in particular to do with them, as opposed to any other bakery located in any of various places called Riverside.

Here's how that played out in a few cases where I represented the domain registrant:

berkscountyweddings.net
https://www.adrforum.com/DomainDecisions/1266923.htm

Respondent contends that, without a federal trademark registration or even application for the BERKSCOUNTYWEDDINGS.COM and BERKSCOUNTYWEDDING.COM marks, Complainant cannot claim rights in those marks because Complainant has not shown any evidence that those marks have acquired secondary meaning. Respondent also contends that because the marks are wholly made up of descriptive terms, there is no evidence that the public identifies the marks with Complainant, the supplier of the described services, rather than the services themselves. The Panel agrees...

parisjewellers.com
https://www.adrforum.com/DomainDecisions/1573085.htm

This Panel finds that since the claimed mark is comprised of two common, generic and descriptive terms (PARIS JEWELLERS), Complainant should have submitted sufficient evidence to establish secondary meaning and Complainant failed to do it. See Chicago Rest. & Entm’t Guide, Inc. v. Polat, FA 1310901 (Nat. Arb. Forum Apr. 22, 2010) (failing to find common law rights as “the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning” and Complainant failed to provide the required evidence to show secondary meaning).

Both of those domain names were of the form (geographic location) + (goods/services) and neither complainant had a registered mark.

I have parked the page. It has ads for bread, bagels, cakes, etc. I do not bake anything. All I want is to sell a domain.

Since they are bakers and I am not involved in the industry...

Nobody is going to make that kind of a distinction. If the domain name corresponds to a trademark, and there are advertisements for goods/services relating to the trademark, then that's going to be a problem. If you go and register my BerryhillDogFood.tld and have ads for dog food, then you are violating my trademark. You don't have to make and sell dog food to do that. Quite obviously, you would be making money off of confusion with my mark.

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[Jak Blak]

Thank you for taking the time to educate me. Maybe I understand it now!

You made it very clear that a trademark does not have to be registered in order to be legitimate in the US.

Company X can claim they have a right to the domain but must prove that they have an undisputed right to it, which becomes harder to do because there are so many bakers and so many possible Riversides. Both very generic. Looking good for me!

Unless I specifically try to profit off of company X in any way- sell their product, monetize and mention their product, badmouth their product, or accidentally advertise something that could be mistaken for their product. Or approach them to sell them the domain. Then I could lose quickly. If I avoid those things, then I could be OK with this particular domain because it is very generic. I think I grasp it now. Thank you again.

 

[jberryhill]

Both very generic.

The abuse of the word "generic" is another problem area.

Generic has a specific, limited meaning. A "generic" term is something that you almost practically cannot avoid using for the thing that it denotes.

For example, "tomato". There aren't many good ways to refer to the edible fruiting body of a New World member of the nightshade family than by calling it a "tomato". Now, sure, there are two ways to pronounce it, but that is a generic term.

"Riverside bakery" is not a "generic" term. It is a geographically descriptive term. There is a world of difference between descriptive and generic terms. The most important difference, and where domainers get into a raft of trouble by casually flinging around the word "generic" for things which most certainly aren't, is that a descriptive term CAN acquire distinctive meaning as a mark through longstanding, substantially exclusive use, such that the relevant consuming public recognizes it as referring to a particular source.

Let's say that instead of a bakery in Riverside, and there are certainly any number of bakeries in any number of Riversides, I'm thinking of opening up a motor speedway in Indianapolis.

Now, like a "Riverside Bakery", surely you would say the same thing about an "Indianapolis Motor Speedway", right?

After all it's just a motor speedway that is in Indianapolis.

So, why would "Riverside Bakery" go one way, and "Indianapolis Motor Speedway" go another way?

How about a space needle in Seattle? Or "Philadelphia Cream Cheese"?

 

[jberryhill]

Now, like a "Riverside Bakery", surely you would say the same thing about an "Indianapolis Motor Speedway", right?

Just to make sure this is clear - the example of "Indianapolis Motor Speedway" is different from "Riverside Bakery". There might be more than one race track in Indianapolis, but for those who might be unfamiliar with it, the Indianapolis Motor Speedway is very well known. Relevant consumers - i.e. motor racing fans - would uniformly recognize "Indianapolis Motor Speedway" not as a general designation of any auto racing venue in Indianapolis, but as referring to one particular motor racing venue.

https://www.indianapolismotorspeedway.com/

So, that is an example of a descriptive term which has acquired distinctiveness as a trademark. I'm pretty sure when they named it the "Indianapolis Motor Speedway" the principal intention was to identify it as a motor speedway in Indianapolis. But it has become so well known that the name carries secondary meaning as a trademark.

 

[MUKRA]

Please make me clear also about this :

There is BOSCH \ COM
and there is BOSCHBIKE \ DE which redirects to BOSCH-EBIKE \ COM

Owning/Registering BOSCHBIKE \ COM will be considered as ?

 

[MUKRA]

Please make me clear also about this :

There is BOSCH \ COM
and there is BOSCHBIKE \ DE which redirects to BOSCH-EBIKE \ COM

Owning/Registering BOSCHBIKE \ COM will be considered as ?

? Any expert opinion

 

[jberryhill]

Mukra,

Bosch is a well-known global brand of ebike motors and drive systems.

"BoschBike.com" clearly refers to Bosch bike products. There is no conceivable set of facts which would make that okay. If that is an unclear situation to you, then you might want to consider investing your time in something other than domaining, and I mean that as a friendly suggestion.

 

[MUKRA]

Mukra,

Bosch is a well-known global brand of ebike motors and drive systems.

"BoschBike.com" clearly refers to Bosch bike products. There is no conceivable set of facts which would make that okay. If that is an unclear situation to you, then you might want to consider investing your time in something other than domaining, and I mean that as a friendly suggestion.

Thank you JberryHill , you are absolutely right, I was confuse because I wonder that such .com domain is expired and available as freshreg and they are using a hyphenated three syllable .com which i mentioned above.

 

[MUKRA]

And as I tried to find some information, its a SURNAME and Name Bio also indicates some similar recent sales like boschenergy\com