Domain / Brand trademark question

[Scotto]

I've got a question about the use of a simple word which is trademarked within a new brand + domain.

I'm not going to go into details about the idea of the brand and or new domain, but it is for a potential audio company selling its own audio cables and speakers etc.

The trademarked word is "Wave" and is held by Bose.
Here is an example of its use : http://www.bose.com/controller?url=/.../wms/index.jsp

By them having this trademark does it mean I can not call my company (some keyword related to audio) wave or similar?
fake example: sound wave or acoustic wave
As wave in my opinion applies to a sound wave which is audio itself?

Any advice on this would be appreciated.

[M.U.]

Hi Scott,

You would do best to do a search in USPTO and maybe also the Australian IP-site to see if the Trademark is in the class where it prohibits your use of the word for the product class you mentioned.

If I am not wrong audio cables and speakers are in class 9, but class 15 might also be interested to look at. I am not sure if there is another class more fitting to your product, so you must read the classes and see if there is.

if Bose has trademark in the classes where your product is in, they might prohibit your use of it, but there might still be a way to use it if you combine the trademark-word with another word.

Trademark is very tricky business so it's not easy to yes/no, it depends very much on the details.

Good luck with it.

Best regards,

M. Unal

[Scotto]

Hi Scott,

You would do best to do a search in USPTO and maybe also the Australian IP-site to see if the Trademark is in the class where it prohibits your use of the word for the product class you mentioned.

If I am not wrong audio cables and speakers are in class 9, but class 15 might also be interested to look at. I am not sure if there is another class more fitting to your product, so you must read the classes and see if there is.

if Bose has trademark in the classes where your product is in, they might prohibit your use of it, but there might still be a way to use it if you combine the trademark-word with another word.

Trademark is very tricky business so it's not easy to yes/no, it depends very much on the details.

Good luck with it.

Best regards,

M. Unal

Thanks for your reply.

There trademark and my potential products are indeed in class 9. I was not looking to use the trade marked work by itself tho. It would always be used with the other word which would make up the brand name.
I would also like to take out the trade mark for the combination of these 2 words together, If I choose to stay with the potential brand / domain name.

Would this solve the potential trade mark issue? or is there alot more too it?

[M.U.]

There is alot more to it I'm afraid. When I applied for trademark for one of my company's project, it was one of the hardest thing I have done.

I choose to do it myself instead of paying an agency or something, to get the feeling of how the whole process works. And I think it have given me alot of knowledge regarding trademarks.

When searching the trademark database for the word "Wave" many other trademarks also come up, where the word is used with other words, so you might have a chance there. But remember that any of these trademark holders can object to your use of the word.

Trademarkia.com is a great website to read about trademarks and also search and apply for one. I suggest you visit their site, maybe they have an answer to your issue.

Best regards,

M. Unal

[biggedon]

my non legal suggestion

if you think the domain and or the product may infringe, why not contact them/whoever and inquire?

that would definitely show there is no malicious intent, and your goal would be to insure your product and domain is not confusingly similar to theirs.

Good luck!

[Cartoonz]

I can tell you right off that is you "ask" Bose, they'll say "no way".

...and, they have enforceable rights in the same category you wish to trade on.

Smarter move is to come up with something else for a name. The Bose Wave Technology is plenty famous and even if you did have the slightest chance of prevailing in court (which IMO, you don't), the legal costs will sink you. Better to spend that cash branding something safe.

[Entropy]

I've got quite a bit of experience with applying for trademarks in Australia, so here's my five cents (rounded up because we don't have one-cent and two-cent coins).

If the name is too generic ("soundwave" for example) then you'll get knocked back on the grounds that it's too common a term. If it sounds at all like another trademark (mis-spelled, phonetic similarity, etc) then you'll get knocked back, too. The same goes if there's a trademark that is built around that word or term: no go. They're far more critical on trademark applications than anyone could logically anticipate, I promise you.

An alternative to registering a word is to register an image containing the word(s). In this case, nothing fancy is needed: it can be as simple as just tweaking one of the letters within the term (elongate a tall letter, for example). You'll have to make sure that this difference is noticeable and substantial enough to be simply described on your application, though.

I've found that TMarque (http://tmarque.com.au) is a great site for checking out the possibility of trademarking a word or phrase within Australia. It will allow you to step through the classification process and will alert you to any problems which you may face in submitting/registering the trademark. You can also call the guys that run TMarque with any questions you might have. In my experience they're more than happy to answer a potential customer's enquiries regarding the trademark process and will also offer you advice on how best to get your word/phrase registered (they're lawyers by trade, by the way).

Once you've submitted the trademark to be registered and it's passed by "the panel", your pending trademark is published in a gazette for all other Australian trademark holders to view (not that they necessarily do, obviously). They have three months from that point to lodge any concerns they might have about your trademark, which is plenty of time for Bose (or whoever else) to make a move. Once the three months has passed and providing that no entity has raised an objection to your trademark, it's registered. At that point you pay around two thousand dollars per class for a ten-year trademark.

You probably know most (if not all) of this already but I thought I'd best write it here just in case you're not aware of a few of the points mentioned above. I'll also add that the most important thing you must do is to seek legal advice before you lodge the trademark so you don't end up wasting your money by making uninformed decisions (as I did when I first started out).

Feel free to contact me if you've any other questions or need some Australia-specific guidance. Best of luck!

Cheers,
Entropy

[domaingenius]

Thanks for your reply.

There trademark and my potential products are indeed in class 9. I was not looking to use the trade marked work by itself tho. It would always be used with the other word which would make up the brand name.
I would also like to take out the trade mark for the combination of these 2 words together, If I choose to stay with the potential brand / domain name.

Would this solve the potential trade mark issue? or is there alot more too it?

First question before going anywhere.Which Country do YOU want to trade mark and use domain ?

DG

---------- Post added at 10:41 AM ---------- Previous post was at 10:38 AM ----------

One other question would be . Are you actually going to use it for legit business or is it really to enable you to keep the domain in the face of claims to it ? I am not saying either way not am I asking you to tell us but that has bearing on where you get the trade mark from .

DG

---------- Post added at 10:42 AM ---------- Previous post was at 10:41 AM ----------

i.e which Country