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Trademark question

Labeled as question in Legal Discussion, started by VadimK Iberica, May 7, 2021

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  1. VadimK Iberica

    VadimK Iberica Established Member

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    Guys, the trademark situation. For example, I want to catch the name GunLake.com
    Then I go to uspto.gov and check for the trademark. No direct match, but a bunch of ''mentions'', basically for ''Gun Lake Casino''. (TSDR LIVE).

    Is that still can get me in trouble easily or unless it's a direct match (or single/plural variation of such), I'll be fine?

    Thanks!!
    Vadim
     
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    A lot of the questions in this forum are like this:

    If I buy a car, and then get into a crash with another car while I'm out driving, will I be found to have done anything illegal?

    The problem with that question is that in order to answer it, you're going to want to know what I was doing with that car. Was I speeding? Did I run a red light?

    Because simply saying "I was driving a car and got into a crash with another car" doesn't really go very far toward addressing the sort of behavior which might, or might not, lead to a conclusion that I am legally culpable for the collision.

    The way these things are phrased start with an inexplicable compulsion to do something:

    Why? Why do you want to catch the name GunLake.com? Is it a childhood dream fulfilled? Do you think it might be valuable? Why might it be valuable? What do you think you might do with it after you get it? What is it that motivates you to think this is a good name?

    The answers to those questions are FAR more informative about the likelihood of this name leading to some kind of trouble.

    But if I tell you "My father shot four people to death one night", would you think he did something illegal?

    I'm pretty sure most people would think that shooting four people to death one night would lead to some serious consequences. As it turned out, the US government gave him an award for it. So you can't just ask "Is it okay, legally, to shoot four people to death in one night?" You'd have to explain a little bit more about the circumstances. And even if it is okay legally, that's not always the end of the story. He never spoke of it, and it bothered him for the rest of his life.
     
  3. VadimK Iberica

    VadimK Iberica Established Member

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    You know, I was always wondering, what is it that makes some people write very long sheets of texts without bringing absolutely nothing to the table? Especially some people that have been here for many years, with a nice blue ''PRO'' badge on their avatars.

    I didn't ask for a psychologist or for the lecture on gun control. I brought the name GunLake as an example only (I did trademark check 30 or 40 different names on that day). Would it make you happier if I'd brought a name FunkyTits or any other stupid option, would you be lecturing me then on MeToo and BLM movements?

    My point was very simple if you didn't get it the first time: if the domain name that I want to register contains only part of the name that is registered with USPTO, is it likely to lead into legal trouble? Again, so people understood the question better, I brought the example where I explained my point. The options of answers that I kinda expected were:
    a) yes
    b) no
    c) probably yes/probably no (I had similar experience)
    d) have no freaking clue what you are talking about but you may ''like'' my post anyways, so I get a point.

    All these options are fine, but you simply behaving like a guru with emotional problems, trying to educate a newbie (which I am not, by the way).

    P.S. And yes, I realized right away your father was in the army when he shouted those four. Of course he didn't do anything wrong. But chances are - his high command did.
     
    Last edited: May 10, 2021
  4. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Then it is unfortunate that you entirely missed the point of my post.

    There is no good answer to that as a general question, and it is going to depend on a lot of other factors. In the example you gave, it is going to depend heavily on your intent and what you end up doing with the domain name.

    In the general case, it is also going to depend on what sort of trademark we are talking about. Not all trademarks are created equal. It's going to depend on whether it is inherently distinctive, arbitrary, suggestive or descriptive with acquired distinctiveness, along with the relative degree of fame.

    I'm sorry you aren't interested in a more comprehensive discussion that would lead to a deeper understanding of some relevant principles of trademark law. One of the problems here is that you have this idea that one of the "correct" answers to your question is going to be among the multiple choices you propose above, and you seem upset at me for suggesting otherwise.

    Here's a question - I found a plant growing in my yard, and I think I'd like to eat it. If I only eat the roots of the plant, instead of the leaves or the fruit, is that going to be the best part? Who knows? It's going to depend on the plant and how I cook it, don't you think? Is it a carrot or a tomato?

    In your example, you left out the important part, and those are the questions I posed in response. Obviously, "Gun Lake" is a lake in Michigan - a geographic location. Now, in another thread, I wrote a comprehensive set of posts on geographically descriptive terms and their use as trademarks versus geographic descriptors:

    https://www.namepros.com/threads/novi-a-city-in-michigan-trademark-application-by-facebook.1236817/

    So, it's going to matter whether or not, for example, the domain name is on PPC and showing casino ads, or whether it is selling real estate between Grand Rapids and Kalamazoo. It depends on the circumstances motivating you to register the domain name and how you end up using it. That's the point. I'm sorry you didn't understand it, but if you don't like my posts, this forum has a convenient ignore feature.

    But, golly, a whole thread about the name of a town in Michigan last week, and now one about the name of a lake in Michigan. The general point didn't change that fast.

    That addresses a limited situation where the "part of the trademark" is itself a geographic term, but certainly isn't a general answer to the question.

    But, hey, there's a ton of folks here at Namepros who have no idea what they are talking about, and will be happy to give you whatever answer you want to hear, rely on, and get into problems with.

    I'm sending you a complete refund of every penny you paid.
     
    Last edited: May 11, 2021
  5. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    Given that the OP said that there are lots of marks where the name in question gets a partial mention, if many companies are using the partial phrase, this works in in OP's favour because no single one of them can say that you are infringing them specifically just by virtue of owning the name, because many people are already using the same mark at least in part...

    Correct me if I am wrong @jberryhill :xf.grin:
     
    Last edited: May 11, 2021
  6. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    In the example given, there are several registrations owned by the same entity which operates the casino. There is one other unrelated registration owned by a motion picture production house.

    But, sure, where you are dealing with a geographically descriptive term of interest, then you'll find a lot of uses of that term. That's not a general principle of "partial marks", that's just an artifact of geographic terms, or common descriptive terms. For example there are over 3400 issued and pending registrations with the word "California" in them, and over 8,000 with the word "super".

    But, because this is Namepros, a question seeking the answer "is it okay to register 'part' of a trademark" with this particular example having the "part" have independent significance as a geographic term, is a question that really misses the larger point about whether that "part" is or is not itself distinctive, and how distinctive is it. More important in the example given, though, is what is the intended use of the domain name.

    Take, for example....

    Word Mark DIET COCA-COLA
    Registration Number 1257789

    Is it okay to register "part of the mark" as a domain name? It's going to highly depend on which part we're talking about, don't you think?

    But go ahead and give a "yes" or "no" answer to that one, or else you'll piss someone off.
     
    Last edited: May 11, 2021
  7. VadimK Iberica

    VadimK Iberica Established Member

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    Well, thanks a lot for the detailed explanation, appreciate it.

    I am not looking for simple and short answers, as you suggested, and I definitely haven't been offended in any way. I also mean no offence to you, your post just seemed to me like an explanation of basics to the kid, that your first answer is a half-page and very figurative way to say ''depends''.

    Of course I know it depends. Everyone understands it. I know there are no answers to rely on. And I definitely am not trying to find a trademark lawyer on this forum. What I am looking for is people that know domain name trademark rules better than me and that would like to inform me about possible outcomes.

    If you just say: hey Vadim:

    1) if usage of this name is similar to ''registered'' way (online casino) - this is dangerous and has a high chance of trademark violation claim
    2) using this name as a source of information about GunLake - has smaller chance for you to get into troubles
    3) reselling the domain name to a third party, without any content attached to it - ?
    More links on the subject: bom, bom, bom.

    2nd and 3rd posts are informative, and will definitely read the link about ''geo trademark'' that you suggested. Thanks!
     

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