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Trademark... 'The'...

Labeled as discuss in Legal Discussion started by DefinitelyDomains, Jan 28, 2020.

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  1. DefinitelyDomains

    DefinitelyDomains DefinitelyDomains.com VIP

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    OK, so as an example 'The Blue Whale' is trademarked and I want to register the domain, 'BlueWhale'.

    Is this OK and unlikely to cause any issues down the line? What do you reckon?
     
    Last edited: Jan 28, 2020
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  2. Ryan217

    Ryan217 NameBlitz Gold Account

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    (Insert disclaimer that I am not a lawyer and this is not legal advice here)

    Maybe.

    In the US at least it is my understanding that it dosent have to be an exact match just confusingly similar to violate someone's tm.
     
  3. bmugford

    bmugford www.DataCube.com PRO ICA Member VIP ★★★★★★★★★★

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    It depends. It is impossible to answer a question like that fully, without more details.

    In this example blue whale clearly is a generic term that would make a good brand for many uses.

    However, it is protectable as TM as well, especially in an unrelated field.

    If it was a suggestive TM, like for instance seafood related, that might not be as protected.

    Brad
     
  4. BrandAptly.com

    BrandAptly.com Established Member

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    Assuming that 'The Blue Whale' is a software company, would it still be a trademark infringement if he (or the buyer) uses BlueWhale.com for a restaurant?
     
  5. bmugford

    bmugford www.DataCube.com PRO ICA Member VIP ★★★★★★★★★★

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    I think it would be very hard to successfully argue that it is infringing in that case.
    They are totally unrelated fields.

    Brad
     
  6. BrandAptly.com

    BrandAptly.com Established Member

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    Which brings me to my next question...
    Based on your response, is it still a bad idea for a domainer to register BlueWhale.com for resale since he/she has no control over the end-user's application of the domain?
     
  7. johnn

    johnn Top Contributor VIP ★★★★★★★★★★

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    But RedWhale.com is ok.
     
  8. bmugford

    bmugford www.DataCube.com PRO ICA Member VIP ★★★★★★★★★★

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    Most popular terms or phrases generally have some kind of TMs. That is how it works with popular terms.

    I would feel comfortable owning BlueWhale.com. It is easily defendable in my view.

    With that said often these theoretical arguments have many more factors that need to be considered.

    Brad
     
  9. Ryan217

    Ryan217 NameBlitz Gold Account

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    Personally if there is a tm live for a term I want to see multiple companies actively using the term. I can't speak for how a UDRP would unfold but I feel if just one company uses a tm you could say it's not bad faith because another buyer could use it for a different business but if there are already multiple businesses using a term I personally feel it gives some credibility to such a claim.
     

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