Trademarks and domains

[ThreeD]

I have been thinking about this for a while and I would like to know what you guys think.

We own a generic .TV domain, lets call it Special.TV (that's NOT the actual name of the domain)

We searched the USPTO trademark database and came up with one mark - Special TV. The mark is registered in class 41, video clips and entertainment. Their main domain is SpecialTV.com.

Would we be on the safe side if we used Special.TV for educational purposes?

To make things even more interesting I should mention that we're not located in the US, and the domain Special.TV isn't a gTLD, it's a ccTLD so different rules may apply.

Personally I don't think "Special TV" looks anywhere similar to Special.tv - Special Resources and Information..

I would also like to point out that the marks disclaimer says: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TV" APART FROM THE MARK AS SHOWN.

I refuse to accept the fact that just because some tiny company in the US has registered a similar trademark, they have the right to take it away from us - especially since we're not doing business in the US.

If this could become a problem, I wonder what Portalis is going to say to the fact that there is a live, registered trademark in the US that goes under "Business TV". As some of you may remember, portalis bought Business.TV for $101,000 not long ago. I doubt they'd just hand the domain over because some US based corporation owns the "Business TV" trademark in the US.

All your feedback is appreciated

Thanks!
PS: We could obvisouly block all US visitors to be on the safe side, but that isn't the main issue here.

 

[enlytend]

It's impossible for anyone to give you a valid answer without knowing all the details.

We searched the USPTO trademark database and came up with one mark - Special TV. The mark is registered in class 41, video clips and entertainment. Their main domain is SpecialTV.com.

Would we be on the safe side if we used Special.TV for educational purposes?

Is your business dealing in video clips and entertainment?

I would also like to point out that the marks disclaimer says: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TV" APART FROM THE MARK AS SHOWN.

Notice that doesn't say anything about the word "Special" or the combination of the two (which is the entire mark ... which is what's at issue)

I refuse to accept the fact that just because some tiny company in the US has registered a similar trademark, they have the right to take it away from us - especially since we're not doing business in the US.

You're not using the domain yet? That "tiny company" was first to establish use in commerce and they've jumped through all the hoops to register the tm. If you're starting a business that would be "confusingly similar", what right would YOU have to infringe on what they've built?

If there's absolutely no conflict, then no problem, but the only one qualified to make that judgement call would be a lawyer who's familiar with ALL the details.