Trademarked generic keyword question

[werty]

So I have the following situation: I own a two word generic keyword .com in plural version. The singular version is trademarked for these exact keywords and is an operating business. So my question is: Can a related business operate on my plural version? Or will the owner of the singular version with the keywords trademarked be able to take them down? For the sake of example, lets say these are the domains:

CycleHelmet dot com (say it's the operating business and has the word "cycle helmet" trademarked).

CycleHelmets dot com (say this is mine and I am looking to sell it to an end user. But end user would be competition for trademark owner as they sell the same product).

So how would this work out in terms of trademark law?I mean business owner trademarked a generic term so it's not like a brand involved and I believe is not fair to think a generic term belongs to you... What are your thoughts??

 

[alien51]

Many existing companies share the same identical brand names, for example: "Zenith" or "Pioneer".

The essential thing with trademarks, is that your brand name should never be CONFUSING to customers in terms of business identity.

One main source of confusion, is if you are in the same business as the other guy with exactly the same name. That's so obvious there's no need for explanation to that.

Some companies TM their names with a widely encompassing "usage" clause. The rule is, there can't be two roosters in the same hen house.

So i believe if you own a plural domain version of a TM, your only chance for a buyer is someone who runs a business that is totally different from the guy who owns the TM. That will severely limit your number of potential buyers.

Disclosure: I am not a trademark lawyer.

 

[werty]

So in your opinion if:

CycleHelmet dot com sells bicycle helmets and owns the trademark for "cycle helmet". Then CycleHelmets dot com can't be used for selling bicycle helmets? Even though term is generic?

 

[alien51]

Yes.

As you can see, it's not really the "generic-ness" of the name. It's the usage. People will be confused if the plural version is the same company as the singular version. You are creating confusion.

 

[werty]

thanks for your advise alien51...

 

[enlytend]

CycleHelmet dot com sells bicycle helmets and owns the trademark for "cycle helmet". Then CycleHelmets dot com can't be used for selling bicycle helmets? Even though term is generic?

Here's an important point:

If they were able to register a trademark on the term, then in the eyes of the Patent and Trademark Office (and the law) the term is NOT generic (or "descriptive") when used for that class of goods and services.

By granting the trademark, they are saying that it uniquely identifies a particular source (the mark owner) of those goods and services.

(If the patent office doesn't think that an application meets those criteria, they reject it.)

Another thing to look at though: Is the trademark in question for a design mark or a character mark? If the tm is for a design only, like a logo, the words in it may not be protected.

If it's not purely a design mark, and the usage is for the same class of goods and services, then the "s" definitely steps over the infringement line.

 

[alien51]

Just out of curiosity, you regged the plural version because the singular was TM'ed and a legit business? That would be like trying to take away the customers from the other guy by having an almost exactly the same name. The other guy would have been pissed. I think the motive alone would have answered your question already.

 

[werty]

No. I purchased the plural version on expiring auction. And there are many other end users using the keywords to sell another product totally unrelated to the owner of the trademark/singular version. I just had to cancel a pending sale to an end user whose business was the same as the trademark owner. But there are plenty of other unrelated businesses who can use the domain without creating "confusion" for trademark owner... That's not how I roll Alien...

 

[alien51]

Well then, that's good.

A moment back there, i thought you said your problem was whether someone can use the plural version to operate a similar business as the singular version TM'ed by someone else.

So my question is: Can a related business operate on my plural version? Or will the owner of the singular version with the keywords trademarked be able to take them down?

Since i am not a trademark lawyer, one practical test i do in this kind of cases is i put myself in the shoes of the TM owner. If i was running a bike helmet store on my singular domain, i would be upset myself if someone grabs the plural version and runs a similar bike helmet store like mine.

Based on my real-life experience, i do own a couple of e-commerce sites myself where they are the plural version of a competitor. In my opinion, i think the plural version makes more sense, for example "FancyBags" is better than "Fancy Bag". After all, you are selling more than 1 bag in your e-store. And the domains in question here, do not have TMs.

On several occasions, i built these sites because the singular version is being held hostage by a Domainer, and it's not showing up on search results anyway.

If possible though, i try my best to buy defensive regs (NET/ORG) to shut out the competitors.

I haven't tried getting a TM for myself though.