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[vslevin]

There is a company in and around my neighborhood who's name is named after 2 words that are not trademarkable. Not even together, they can not and are not TM'd.

They have a couple different websites operating a couple different businesses all under their original 2 word name.com

They also have 2 domains that are TM'd, but these use the original 2 non TM'd words with another non TM'd word, but all together word,word,word.com they are TM'd.

I have a domain which includes their first two words plus one more wordwordword.com that is not currently TM'd that I believe they will want in the very near future. This name like their other wordwordword.com's they have can be TM'd. But it's not right now. The owner was on the news and gave away the info on the next development to come in the next couple of years and I jumped to reg it.

I currently have the name at sedo and for smartass reason's I used local area lawyers for the advertisments keyword, lawyer. I also used a private registration and have it available for lease at leasethis.com

On sedo, "This domain may be for sale by it's owner"
On leasethis, available for lease only.

#1- What am I in for if anything?
#2- Is this cybersquatting iyho? Or is it just domaining, big question mark :?

Thanks,
HasRob..........

IMO, that a textbook example of cybersquatting.

I've never really dealt with TM domains or anything of the sort before, so I may be wrong, but it certainly appears to be the definition of cybersquatting.

edit: From Wikipedia

According to the U.S. federal law known as the Anti-Cybersquatting Consumer Protection Act, cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else.

Under that, then certainly yes.

 

[Broker]

According to the U.S. federal law known as the Anti-Cybersquatting Consumer Protection Act, cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.


I'm not so sure about that. Anyone else? This domain I have is not TM'd but could and would be if the company wants and gets a hold of it.

 

[IAmAllanShore]

... who's name is named after 2 words that are not trademarkable. Not even together, they can not and are not TM'd.

And what leads you to believe this?

-Allan

 

[RJ]

A company doesn't need to register a trademark to have acquired trademark rights in the term. See http://www.bitlaw.com/trademark/common.html

Now if the term is purely descriptive, then it wouldn't qualify for trademark registration. But from the sounds of it, you're intentionally violating their trademark.

 

[Broker]

And what leads you to believe this?

-Allan

If they could be they would number one, and two, similar names are also not TM'd and ones that are use only one of those similar words within their TM and they are also TM'd by multiple companys.

Example: Central park or Sanfransico Tree < Just an example. Add say, bank to the end and you have Sanfransicotreebank. A trademarkable name.

 

[IAmAllanShore]

So you mean exactly like "Frosted Mini Wheats"? (Sorry - I know I used this one just a few threads ago also, but it is one of the classic examples...)

(Purely descriptive terms, no? In any event, the long and short of it is almost anything can be registered as a TM if it gains some secondary meaning...)

And just for poops and giggles - go to http://www.uspto.gov and choose "trademarks" then "Search trademarks" and just search "Central Park" - true that many do add a specific service, but... Just have fun

-Allan

 

[Broker]

Allan, I appreciate your humor and reply. But "Frosted mini wheats" is exactly that. Central park is also Central park. Sanfranciscotree could be thousands of "trees"

I've already checked the TM's. Their main company name is not a registered TM because its too common. Add another word and yes, you can TM it.

So imho, I'm not violating any TM because there is none. I also have not tried to sell anything to anyone. I mentioned "May" be for sale by its owner and also available for lease only, maybe. This is why I'm asking for advice.

Thanks.

 

[vslevin]

Allan, I appreciate your humor and reply. But "Frosted mini wheats" is exactly that. Central park is also Central park. Sanfranciscotree could be thousands of "trees"

I've already checked the TM's. Their main company name is not a registered TM because its too common. Add another word and yes, you can TM it.

So imho, I'm not violating any TM because there is none. I also have not tried to sell anything to anyone. I mentioned "May" be for sale by its owner and also available for lease only, maybe. This is why I'm asking for advice.

Thanks.

But the bad faith is all there. Even if it is not trademarked, they might be able to argue that they were an established business under that name, and that you registered the name with bad faith.

Again, this definitely isn't my area of expertise. I do, however, think that they would have a case.

 

[IAmAllanShore]

HasRob,
I'm not sure if you misunderstood my post, if there is some distinction in the UK that I'm not picking up on (Not in the law, but in your use of terms), or if you just don't get the fundamentals of TM law (Note: you were talking about TM's here, but as they apply to UDRP any analysis would change slightly.).
However, I'll bet dollars to donuts that if you PM me the name, I can find an almost exact equivalent that has a registered TM - common law rights aside.
-Allan

 

[Broker]

Thanks for all the replies, I have received the info and awnsers I needed regarding this via pm.

HasRob........