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question What’s considered infringement?

Catch.Club
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Astner

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Disclaimer: Always speak to a lawyer when it comes to legal matters, because they're the only one that can (and are obligated) to give you sound legal advice. So what I'm about to say should not be taken as legal advice.

Domains, by themselves, aren't protected by copyright. However that game is copyright protected (and maybe even trademarked), but as long as you registered the domain before they published the game (or filed the trademark) that should be an issue.

However, if you're interested in selling baby.io, this looks like a golden opportunity.
 
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Just hope they become very popular and they buy your name
 
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as long as you registered the domain before they published the game (or filed the trademark) that should be an issue

The good news is that if they file for a trademark, you can contest it due to prior use of the name and/or ownership of the domain, and the application might be rejected. It will depend on jurisdiction, though. Not all TM offices exercise the same level of due diligence.
 
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The good news is that if they file for a trademark, you can contest it due to prior use of the name and the application might be rejected.
But they haven't used the name in trade...?
 
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But they haven't used the name in trade...?
I edited the post before you repiled. But still, the domain has a for-sale lander which may also be archived by google and/or archive.org, that should be enough. In some cases just owning the domain may also be enough. Mind you - to contest the tm application, not to forbid them to use it as a name of the game.
 
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Astner

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The good news is that if they file for a trademark, you can contest it due to prior use of the name and/or ownership of the domain, and the application might be rejected. It will depend on jurisdiction, though. Not all TM offices exercise the same level of due diligence.
Wouldn't you need to run a similar business to do that? There are multiple trademarks for the same name across different industries. Either way, I don't think "just owning a domain" gives you much of leverage when it comes to legal battles.

Trademarks are registered in one or more specific classes of goods and services. Similar marks in different classes are usually not in conflict with each other, with one exception: similar marks for similar products which are sold in the same marketing channels may be in conflict even if they are registered in different classes. If two products could be sold in the same department of a department store, or advertised in the same registered in different classes, they may still conflict.
 
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I trhink we're talking about different things. You can contest a pending TM application on many grounds, and proving someone registers a trademark matching your domain name in bad faith (such as - to try to use it in a domain dispute) is one of them. It gets harder after the TM is approved, because institutions hate to be proved wrong. Again, may differ by jurisdictions and of course specific cases.

And again, I'm not a domain lawyer, but I know a thing or two about TM disputes. As always, get a legal counsel for best results.
 
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I can see being really concerned with the presentation looking identical to the domain name, but I am not sure that one can probably do much about it unless the .io site was developed with a registered or use-implied trademark rights.

Does it reduce the value of the domain name, or increase it maybe, or have little impact? Not sure.

If one used it for parking, and an ad was presented directing to their game, would that be potential issues? Not sure.

It is an interesting case. Thanks for all the contributions and opinions, everyone.

-Bob
 
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jberryhill

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John Berryhill, Ph.d., Esq.
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I would like to know how to prevent anyone from creating products or services based on my names without trademark

No such animal. There is no mechanism for obtaining exclusive rights in a string of characters, like Columbus claiming the new world for Queen Isabella.

because when trademarking you need to use it and build the products.

By "trademarking", I assume you mean "registering a trademark in the US." But, that's the point.

A trademark isn't about establishing rights in some string of letters and symbols. It is about protecting the reputation and goodwill of someone who markets a product under a distinctive name, so that when consumers encounter that product so-marked in the marketplace, they have some idea of the quality of that product, whether it is the same thing that they've tried or seen before, etc..

When you look at this:

U5B5V4X6NFDWBAZ24LLK5DMU6I.jpg


If you are an American beer drinker, and I asked you to choose from that selection, then it is highly likely that among "Budweiser", "Bud Light", "Stella Artois", "Heineken", "Miller Lite", and "Coors Light", you would have a definite idea of which of those you might pick, or whether you would keep looking for some shelves that look more like this:


beer-cooler-c-store.JPG


...and you may have definite opinions about various of the brands there.

It can also depend on your beer drinking circumstances. If it's mid-summer and I'm having a cookout, then I'd probably grab some Corona or Red Stripe. I'm partial to Hoegaarden, but during Oktoberfest I tend to go for Paulaner, since that's the main beer on tap at my local German club party in the fall.

It's those sorts of associations... having Stella on tap in Belgium, or having associated various brands of beer with different beer drinking events, flavor preferences, etc., which are going to make me grab one or another of them if I am looking to pick up a six pack of beer. But I don't see any in that picture I haven't tried at one time or another.

That reputation based on association of consumer perception and the mark is the "goodwill" that has value to the producer and is what trademarks are about protecting.

Sure, "Corona" is a word that can be used for a lot of things, and the fact that it is a mark for beer does not prevent use of the word "corona" in such contexts as a coronavirus (so named because of the spiky "crown" appearance), astronomy or physics.

But there is not a mechanism for saying "this string of letters belongs to me and nobody else can use it" absent an awful lot of goodwill in a famous mark like, say, Coca-Cola, derived from massive global recognition by consumers.
 
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iTesla

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No such animal. There is no mechanism for obtaining exclusive rights in a string of characters, like Columbus claiming the new world for Queen Isabella.



By "trademarking", I assume you mean "registering a trademark in the US." But, that's the point.

A trademark isn't about establishing rights in some string of letters and symbols. It is about protecting the reputation and goodwill of someone who markets a product under a distinctive name, so that when consumers encounter that product so-marked in the marketplace, they have some idea of the quality of that product, whether it is the same thing that they've tried or seen before, etc..

When you look at this:

U5B5V4X6NFDWBAZ24LLK5DMU6I.jpg


If you are an American beer drinker, and I asked you to choose from that selection, then it is highly likely that among "Budweiser", "Bud Light", "Stella Artois", "Heineken", "Miller Lite", and "Coors Light", you would have a definite idea of which of those you might pick, or whether you would keep looking for some shelves that look more like this:


beer-cooler-c-store.JPG


...and you may have definite opinions about various of the brands there.

It can also depend on your beer drinking circumstances. If it's mid-summer and I'm having a cookout, then I'd probably grab some Corona or Red Stripe. I'm partial to Hoegaarden, but during Oktoberfest I tend to go for Paulaner, since that's the main beer on tap at my local German club party in the fall.

It's those sorts of associations... having Stella on tap in Belgium, or having associated various brands of beer with different beer drinking events, flavor preferences, etc., which are going to make me grab one or another of them if I am looking to pick up a six pack of beer. But I don't see any in that picture I haven't tried at one time or another.

That reputation based on association of consumer perception and the mark is the "goodwill" that has value to the producer and is what trademarks are about protecting.

Sure, "Corona" is a word that can be used for a lot of things, and the fact that it is a mark for beer does not prevent use of the word "corona" in such contexts as a coronavirus (so named because of the spiky "crown" appearance), astronomy or physics.

But there is not a mechanism for saying "this string of letters belongs to me and nobody else can use it" absent an awful lot of goodwill in a famous mark like, say, Coca-Cola, derived from massive global recognition by consumers.
Thank you for your time and knowledge!
What if i create a story like a fairy tale of a book and mention in this story all the possible combinations of this names of the future, then will copyright this story, will this work as a protection method?
Then the big corps if they try to create and trademark products or services based on this names they will have to face my book story and come to me the Author so I give them the right for licensing, in short they will have to pay me so they will be able to create or trademark products based on my book story.
 
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jberryhill

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John Berryhill, Ph.d., Esq.
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What if i create a story like a fairy tale of a book and mention in this story all the possible combinations of this names of the future, then will copyright this story, will this work as a protection method?

In a word, no.

Copyright is the exclusive right to copy, display, perform, or make derivative works from an artistic or literary work. It does not protect short phrases, slogans, etc..

Despite the copyright in, say, Gone With the Wind or Star Wars, anyone is free to say "Frankly, my dear, I don't give a damn." or "Luke, I am your father." Likewise the title of a single literary or artistic work is not a trademark unless the title is used in connection with the marketing of related merchandise (think "Star Wars" action figures) or used in a series of such works ("Planet of the Apes").


TrademarkPatentCopyright
What's legally protected?A word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.Technical inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.Artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.
What's an example?Coca-Cola® for soft drinksA new type of hybrid engineSong lyrics to “Let It Go”
from "Frozen"
What are the benefits
of federal protection?
Protects the trademark from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.Safeguards inventions and processes from other parties copying, making, using, or selling the invention without the inventor’s consent.Protects your exclusive right to reproduce, distribute, and perform or display the created work, and prevents other people from copying or exploiting the creation without the copyright holder’s permission.

Probably one of the most all-time top recycled movie quotes:

 
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DealMaker1

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Not much you can do. Baby is ultimately a generic keyword.

Remember you can't TM a domain. Google goes after people for using "Google" TM IN the domain name, not "Google.com" itself. So unfortunately there is little you can do, especially because it's undeveloped and is generic.
 
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iTesla

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In a word, no.

Copyright is the exclusive right to copy, display, perform, or make derivative works from an artistic or literary work. It does not protect short phrases, slogans, etc..

Despite the copyright in, say, Gone With the Wind or Star Wars, anyone is free to say "Frankly, my dear, I don't give a damn." or "Luke, I am your father." Likewise the title of a single literary or artistic work is not a trademark unless the title is used in connection with the marketing of related merchandise (think "Star Wars" action figures) or used in a series of such works ("Planet of the Apes").


TrademarkPatentCopyright
What's legally protected?A word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.Technical inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.Artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.
What's an example?Coca-Cola® for soft drinksA new type of hybrid engineSong lyrics to “Let It Go”
from "Frozen"
What are the benefits
of federal protection?
Protects the trademark from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.Safeguards inventions and processes from other parties copying, making, using, or selling the invention without the inventor’s consent.Protects your exclusive right to reproduce, distribute, and perform or display the created work, and prevents other people from copying or exploiting the creation without the copyright holder’s permission.

Probably one of the most all-time top recycled movie quotes:

Can one trademark e.g. a naming marketplace be trademarked with it's 2 words combo domain so it covers the other names that it invented?
Or each phrase has to have it's own trademark registered and be in use right?
Maybe there are other ways to protect something that is not yet widely in use under one Umbrella?
 
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I'm not a lawyer or a Trademark attorney, but I can tell you that there's such a thing as a "commonlaw trademark". My understanding is that if you've been doing business under that name and you're publicly known as, "baby.io" then you may be able to claim a commonlaw TM on the name. This is how we were able to win the UDRP on Patterns, as the business was doing business as that name for many years despite owning a tm on "patterns". So, you don't necessarily have to own the trademark on the name.

In the case of baby io, though, you already own the name and it would be difficult for the app dveloper wwith the same name to claim the domain is theirs, in my opinion. So let them do all the promo they want and get big--you as the domain owner will be benefiting from that.
 
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Not much you can do. Baby is ultimately a generic keyword.

Remember you can't TM a domain. Google goes after people for using "Google" TM IN the domain name, not "Google.com" itself. So unfortunately there is little you can do, especially because it's undeveloped and is generic.
"A mark comprised of a domain name may be registered as a trademark or service mark in the U.S. Patent and Trademark Office. However, just like any other mark, the domain name is registerable only if it functions to identify the particular source of goods or services offered. In other words, it must be distinctive so as to be capable of distinguishing your goods or services from those of others." https://www.americanbar.org/groups/business_law/safeselling/domains/
You actually CAN register the domain name as a trademark.
 
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DealMaker1

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"A mark comprised of a domain name may be registered as a trademark or service mark in the U.S. Patent and Trademark Office. However, just like any other mark, the domain name is registerable only if it functions to identify the particular source of goods or services offered. In other words, it must be distinctive so as to be capable of distinguishing your goods or services from those of others." https://www.americanbar.org/groups/business_law/safeselling/domains/
You actually CAN register the domain name as a trademark.
This doesn't say a domain can be a trademark. It says "a mark that is comprised of a domain name" which is actually vague and quite meaningless and like most other laws, is open to interpretation.

The fact remains you can't TM a domain name because you actually can never own a domain name. You can just rent it. That would be like calling an apartment you rent "my". It actually isn't. It is owned by the landlord. So regardless how the American bar views it, "
.com" cannot be trademarked. Even if the patent office decides to allow it, there is obvious legal recourse for those who want to contest it. The WIPO process is about the trademark IN the domain, not the ".com" itself. So you register Google.vc for sh*ts and giggles, for example. Google sees this and files for a WIPO procedure. It's actually not the .VC they want you to stop using, but the "Google" they want you to stop using. Just so happens you registered "Google" in .VC so they are coming after Google.vc.

Cheers
 
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jberryhill

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John Berryhill, Ph.d., Esq.
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The fact remains you can't TM a domain name

Sure you can.

This is why I keep driving at "what is a trademark". It doesn't matter if the mark is also a domain name, and it doesn't matter if you don't "own" a domain name. I'm pretty sure that Red Bull doesn't own any red bulls either, but that's beside the point of it being used as a mark on a beverage.

If you stick "whatever.whatever" on your product, and that serves to distinguish your product, then it's a trademark. It doesn't matter if it also functions as a domain name.

There are, of course, thousands of examples...

Screen Shot 2023-01-18 at 11.10.33 AM.png


And, yes, many of these are character only marks which operate at the domain name in question. Just picking a few at random, out of more than 11,000 registered marks with ".com" in them...

Screen Shot 2023-01-18 at 11.09.47 AM.png


Screen Shot 2023-01-18 at 11.09.16 AM.png



Screen Shot 2023-01-18 at 11.08.35 AM.png


It doesn't matter what the "ownership" status is.

If I rent a property at, say, 10 Main Street in my town, and I run a nightclub called "10 Main", I can certainly use "10 Main" as the trademark for my nightclub. It doesn't matter that I don't own the building. What I do own is the goodwill in my mark for those services.

In fact, I can default on my lease, move somewhere else, and still call my club "10 Main" if I want to.

Trademarks are trademarks. If something is used as a trademark, then it is a trademark. It doesn't matter what else it might happen to be.
 
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jberryhill

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John Berryhill, Ph.d., Esq.
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DealMaker1

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Sure you can.

This is why I keep driving at "what is a trademark". It doesn't matter if the mark is also a domain name, and it doesn't matter if you don't "own" a domain name. I'm pretty sure that Red Bull doesn't own any red bulls either, but that's beside the point of it being used as a mark on a beverage.

If you stick "whatever.whatever" on your product, and that serves to distinguish your product, then it's a trademark. It doesn't matter if it also functions as a domain name.

There are, of course, thousands of examples...

Show attachment 230590

And, yes, many of these are character only marks which operate at the domain name in question. Just picking a few at random, out of more than 11,000 registered marks with ".com" in them...

Show attachment 230591

Show attachment 230592


Show attachment 230593

It doesn't matter what the "ownership" status is.

If I rent a property at, say, 10 Main Street in my town, and I run a nightclub called "10 Main", I can certainly use "10 Main" as the trademark for my nightclub. It doesn't matter that I don't own the building. What I do own is the goodwill in my mark for those services.

In fact, I can default on my lease, move somewhere else, and still call my club "10 Main" if I want to.

Trademarks are trademarks. If something is used as a trademark, then it is a trademark. It doesn't matter what else it might happen to be.
You can't TM .com. If google.com were to drop, you can register it, but "Google" is a trademark, legally trademarked. They can still wrestle that from you with little argument.
 
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DealMaker1

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Because ANY domain can be dropped at any time, you have no recourse to owning the .com or whatever extension. WIPO doesn't allow this. They are an impartial entity that only looks if TM rights, for names, have been infringed upon.
 
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DealMaker1

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Imagine if you have a domain, baby.io, for example. WIPO doesn't give a toot about .io. It only cares whether there is infringement on "baby", nothing more.

You can't really infringe on "baby" so this is a different discussion altogether.
 
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jberryhill

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John Berryhill, Ph.d., Esq.
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You're talking apples and oranges.

Domain names can be trademarks. I just showed you how you can find 11,000 examples of that.

In a domain name dispute, which is a different context from seeking registration of a mark, then the first element is whether the accused domain name is "identical or confusingly similar to" the mark. For the purposes of a UDRP, the TLD is typically ignored, so that the mark "example" is deemed identical to the domain name "example.tld".

But that has nothing to do with whether domain names can be trademarks.

Beyond that, I really don't understand what you are trying to say. Domain names can function and are used as trademarks every day. That was one of the points in the entire "Booking.com" case decided last year by the US Supreme Court. Yes, they established that "Booking.com" was a distinctive mark for their services and which had acquired secondary meaning through longstanding notorious and exclusive use.
 
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DealMaker1

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You're talking apples and oranges.

Domain names can be trademarks. I just showed you how you can find 11,000 examples of that.

In a domain name dispute, which is a different context from seeking registration of a mark, then the first element is whether the accused domain name is "identical or confusingly similar to" the mark. For the purposes of a UDRP, the TLD is typically ignored, so that the mark "example" is deemed identical to the domain name "example.tld".

But that has nothing to do with whether domain names can be trademarks.

Beyond that, I really don't understand what you are trying to say. Domain names can function and are used as trademarks every day. That was one of the points in the entire "Booking.com" case decided last year by the US Supreme Court. Yes, they established that "Booking.com" was a distinctive mark for their services and which had acquired secondary meaning through longstanding notorious and exclusive use.
Fact remains, no domain is trademark-able. The assumption is .coms are part of the registry. You can't TM them. You can TM the components of the domain, like "Google" but NOT the domain itself.

Try it. See what happens.
 
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DealMaker1

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You're talking apples and oranges.

Domain names can be trademarks. I just showed you how you can find 11,000 examples of that.

In a domain name dispute, which is a different context from seeking registration of a mark, then the first element is whether the accused domain name is "identical or confusingly similar to" the mark. For the purposes of a UDRP, the TLD is typically ignored, so that the mark "example" is deemed identical to the domain name "example.tld".

But that has nothing to do with whether domain names can be trademarks.

Beyond that, I really don't understand what you are trying to say. Domain names can function and are used as trademarks every day. That was one of the points in the entire "Booking.com" case decided last year by the US Supreme Court. Yes, they established that "Booking.com" was a distinctive mark for their services and which had acquired secondary meaning through longstanding notorious and exclusive use.
Well, here is the point. Every extension is overseen by the mother-ship. They are making money from every registration, .com, .VC, .lc, dot whatever. It is a government institute. They control it via certified organization. They don't care about any weird attachment you may have to a domain.

So there is no dispute. Their procedure tries to be non-partial. But from personal experience, it has shown me they are only interested in whether you have violated a TM, nothing else. They are in control of every extension, dont mistake that for fantasy.
 
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Fact remains, no domain is trademark-able. The assumption is .coms are part of the registry. You can't TM them. You can TM the components of the domain, like "Google" but NOT the domain itself.

Try it. See what happens.
We already have examples, 11,000 domain names that have received a valid TM from the USPTO, provided by @jberryhill . So what you're saying is that those 11,000 domain names are NOT trademarks, and the USPTO was incorrect in granting them?
 
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