"Z" Germans are coming! - TM Distinctiveness?

[Ronald Regging]

I have a question about distinctiveness when dealing with "Z" and generics.

Lets say there are two companies that both sell cars. Cars.com and CarzInc.com. Now, some years later, I acquire the domain Carz.com, would I be able to use this to sell cars?

I realize the issue probably wouldn't be with the owners of Cars.com, since its a generic term, I don't think there would be a TM problem if I had a legitimate use for the domain.

However, I am wondering if the owners of CarzInc.com would be able to claim TM rights to the term "Carz"?

Would changing the "s" to a "z" on a generic term make it distinctive enough to qualify for TM status?

 

[Diabro]

I actually think that it would infringe on cars.com. It could be used to dilute their brand and they would have no option but to challenge this.

 

[blaknite]

From what I've been reading on trademarks, they should not approve the registration of a trademark if the term is generic. The example given on the trademark website was corn flakes. Originally corn flakes was the brand but wasn't trademarked. When several companies started producing them the term corn flakes became the generic product and only extensions of that term were trademarkable. (ex. kellogs corn flakes)

I'd say "carz" would be borderline generic. Anyone who read the name would easily recognize what it is about. Still there is little potential that it would or could bring brand recognition to just one company. "Justin's carz" would be brandable, but just plain "carz" should not. However my oppinion is far from legally binding. I think anyone in their right mind would judge it that way, but I wouldn't expect the judge to be in his right mind...

 

[Ronald Regging]

Im not worried about the owner of "cars.com". It's a generic term. you cant have a TM on the term "cars" for selling cars...

In my case, the generic site isn't even developed, so definitely not an issue. I am more worried about the "CarzInc.com" owner claiming distinctiveness. However, they're business is super small, if barely existent, so maybe I'm just worrying about nothing. However, I was just looking for some insight

 

[Diabro]

I amy be wrong but I think their ™ is on "Cars.com" which I believe would make "Carz.com" a very similar name. :imho:

 

[John Doe]

I think they should have "carz" registered to have any justifiable rights.

 

[DNQuest.com]

they should not approve the registration of a trademark if the term is generic. .

Domainers, life would be much easier if you stop with this mindset and replace the word "generic" with "descriptive". Many so-called generic words are TMed. Windows, Apple, Cheer, Champion.... It is a matter if it is descriptive for it's intended purpose.

Now You could not register a TM "cars" for selling cars because it is descriptive in nature. Any business that names their company "cars" is hurting themselves because they would be unable to enforce any TM rights. Now,"Carz" is distinctive and unique. One could argue that it sets them apart from the normal spelling and are afforded rights to be protected.

 

[Dotmainer]

One could argue that it sets them apart from the normal spelling and are afforded rights to be protected.

Dont agree full with that. In german Z is spoken like S

(if you give german my nick-name, in most cases he would read it like SOKI).

So there would be possibly confuse in carZ and carS.
(sure 'car' is english term so not needed to read it with german spelling)

If i'm not wrong it depends on what is TM, on logo or word. I think if its logo then its ok, but when it comes how its read, then can be similar and hurt TM.

Disclaimer: I'm not lawyer, but read a lot about that.
:imho:

 

[liquidcherry]

Hi Zoki,

Sorry but you are wrong, it's more likely in the USA where you pronounce the "Z" like an S (Zoo etc)...In germany it is "hard" outspoken, sounds like "Tsoo"

(sorry RR, didn't want to hijack)

RR, when it comes to your "Z" issue, i just checked bids.com and it redirects to bidz.com, they might have bought that domain?....or check the well known databases for any decisions...

Cheers,

Frank

 

[Ronald Regging]

My main concern is how distinctive "Carz" would be. I think DNQuest touched upon that. In this example "Carz" is also being used by 2 other companies for the sale of other products completely unrelated to cars. So I am wondering if the term, being used by multiple companies for different products, would afford it general distinctiveness, and especially when applied to the case of it's generic meaning?

I come into these things trying to be cautious and I think I just end up making more out of it than need be Like I said, the owner of CarzInc.com is barely existent, they don't have a registered TM, and I am not certain that their usage would be enough to establish a secondary meaning or common law TM.

Anyway, I appreciate all the help

Oh, and to LiquidCherry. Yeah, I tried finding some previous decisions, but it's a bit hard to search by "z"
I think most of the cases I would find, would consist of obvious typo-squatting on the "s" owner and more than likely it wouldn't be a generic term.

 

[Dotmainer]

Hi Frank,

yes and no (i made error in direction s-> , z-> ) .

In my example it would be 'Sahne' -> [ˈzaːnə]
(or flower 'Rose' )

-

 

[blaknite]

Domainers, life would be much easier if you stop with this mindset and replace the word "generic" with "descriptive". Many so-called generic words are TMed. Windows, Apple, Cheer, Champion.... It is a matter if it is descriptive for it's intended purpose.

I'm sure you are right here. Still I believe the way it is written on the upsto website is "generic." I think the reality here is that some group of people sits down at a conference table and makes a decision to the best of their ability as to what they will and will not allow to be trademarked. If I were sitting at that table none of those names above would have been allowed.

Apple NO - Apple Computing YES
Windows NO - Microsoft Windows YES

These seem perfectly clear to me, but I'm sure sitting in a room with a dozen or so other people who aren't exactly of like mind and arguing it out, it would become a bit less clear. Names like these which I don't believe should have ever been allowed TM status end up getting by.

 

[Diabro]

I'm sure you are right here. Still I believe the way it is written on the upsto website is "generic." I think the reality here is that some group of people sits down at a conference table and makes a decision to the best of their ability as to what they will and will not allow to be trademarked. If I were sitting at that table none of those names above would have been allowed.

Apple NO - Apple Computing YES
Windows NO - Microsoft Windows YES

These seem perfectly clear to me, but I'm sure sitting in a room with a dozen or so other people who aren't exactly of like mind and arguing it out, it would become a bit less clear. Names like these which I don't believe should have ever been allowed TM status end up getting by.

That is why Trademarks are specific. Apple has the Trademark for Apple in the computer world but another company could certainly Trademark Apple to sell Tea Pots.

 

[DNQuest.com]

Like it or not, but apple is live for 14 different TMs with Apple computers, Inc with 11 being actually registered...

Serial Number Reg. Number Word Mark Check Status Live/Dead
1 78548796 3038073 APPLE TARR LIVE
2 78430230 3317089 APPLE TARR LIVE
3 78170383 2808567 APPLE TARR LIVE
4 77172511 APPLE TARR LIVE
5 77341831 APPLE TARR LIVE
6 77340780 APPLES TARR LIVE
7 76116541 3226289 APPLE TARR LIVE
8 74693839 2034964 APPLE TARR LIVE
9 74660120 2079765 APPLE TARR LIVE
10 74527910 1895326 APPLE TARR LIVE
11 74034647 1626029 APPLE TARR LIVE
12 73120444 1078312 APPLE TARR LIVE
13 73201697 1144147 APPLE TARR LIVE
14 73743564 1540478 APPLE TARR LIVE


Like it or not, that is how things work. But this is an interesting tidbit.... 28 live "apple" applications (so 14 are not by Apple Computers)...

Serial Number Reg. Number Word Mark Check Status Live/Dead
1 79015853 3196972 APPLE TARR LIVE
2 78548796 3038073 APPLE TARR LIVE
3 78430230 3317089 APPLE TARR LIVE
4 78170383 2808567 APPLE TARR LIVE
5 78190089 3060837 APPLES TARR LIVE
6 77172511 APPLE TARR LIVE
7 77341831 APPLE TARR LIVE
8 77340780 APPLES TARR LIVE
9 77172532 APPLE TARR LIVE
10 76373280 2666330 APPLE TARR LIVE
11 76116541 3226289 APPLE TARR LIVE
12 76495288 2878562 APPLE TARR LIVE
13 76525581 2961728 APPLE TARR LIVE
14 76525580 2922072 APPLE TARR LIVE
15 75434873 2347589 APPLE TARR LIVE
16 74693839 2034964 APPLE TARR LIVE
17 74660120 2079765 APPLE TARR LIVE
18 74527910 1895326 APPLE TARR LIVE
19 74362361 1812427 APPLE TARR LIVE
20 74473432 1862675 APPLE TARR LIVE
21 74034647 1626029 APPLE TARR LIVE
22 73120444 1078312 APPLE TARR LIVE
23 73201697 1144147 APPLE TARR LIVE
24 73811538 1791987 APPLES TARR LIVE
25 73743564 1540478 APPLE TARR LIVE
26 73339558 1221667 APPLE TARR LIVE
27 72425692 0961902 APPLE TARR LIVE
28 72303482 0869284 APPLE TARR LIVE