Legal Question on [word]Today.com

**slobizman** · 09-01-2005, 09:17 AM

There is a domain I'm interested in that is [something]Journal.com. For this question, let's call the [something] "bananas," and make the domain BananasJournal.com There is already a BananasJournal.org, which is the site for a print magazine called Bananas Journal. I checked the trademark database and there is a DEAD trademark for Bananas Journal; dead for 10 years. However, the magazine is still being printed. The word I'm for which I am substituting "Bananas" is just as generic as bananas.

My question is, with a dead trademark, with a generic word in the title, yet with a still-published magazine using those words, what is the legal situation in regards to me purchasing BananasJournal.com

**Acro** · 09-01-2005, 09:30 AM

I see no problem, as long as someone doesn't go ape over the bananas :-D

**slobizman** · 09-01-2005, 10:44 AM

Originally Posted by RADiSTAR

I see no problem, as long as someone doesn't go ape over the bananas :-D

LOL!!!

Follow up question: Okay, Bananas Journal is publishing its magazine each month, yet they have no trademark for it. Can I start my own Bananas Journal online magazine at BananasJournal.com and go register the trademark? 1. Will the trademark office look to see if there is any magazine out in the world with that name, trademarked or not, or just search their trademark database? 2. Can I force the current Bananas Journal magazine to change its name since I own the trademark and am publishing, even though they began their publication first?

**DNQuest.com** · 09-01-2005, 03:58 PM

Ok, if I read this correctly, a company prints a magazine called Bananas Journal, this company owns the domain bananasjournal.org.

If this is this is the case, they do have own a TM on Bananas Journal. They publish a magazine that has commercial value. Since they have been printing the magazine for many years, it is well established. By registering the .com, you will in fact infringe on thier TM. Please do not confuse TM with a registered mark. You clearly acknowledge thier exsistance and thier mark in the commercial arena. That is how you attain a TM.

Now, the question is, what are your plans to do with that domain?
-Capture traffic destined for the .org and profit from it (PPC, offer competing products/services)
-Sell it to the .org owers

If you said yes to either of htese 2, you will be found to be infringing.

As far as submitting for a TM application, you must have an interest in it. I believe your thought process is confusing patent registration with registered marks. Though the mark is dead in the USTPO, that only means there is no registered mark for the TM, but they clearly have a TM. There is no way you will be able to make them change thier name.

Hope this helps

**slobizman** · 09-01-2005, 05:40 PM

Originally Posted by DNQuest.com

Ok, if I read this correctly, a company prints a magazine called Bananas Journal, this company owns the domain bananasjournal.org.

If this is this is the case, they do have own a TM on Bananas Journal. They publish a magazine that has commercial value. Since they have been printing the magazine for many years, it is well established. By registering the .com, you will in fact infringe on thier TM. Please do not confuse TM with a registered mark. You clearly acknowledge thier exsistance and thier mark in the commercial arena. That is how you attain a TM.

Now, the question is, what are your plans to do with that domain?
-Capture traffic destined for the .org and profit from it (PPC, offer competing products/services)
-Sell it to the .org owers

If you said yes to either of htese 2, you will be found to be infringing.

As far as submitting for a TM application, you must have an interest in it. I believe your thought process is confusing patent registration with registered marks. Though the mark is dead in the USTPO, that only means there is no registered mark for the TM, but they clearly have a TM. There is no way you will be able to make them change thier name.

Hope this helps

Thank you for the great explanation.

Am I infringing if I:

1) Simply buy the domain for speculation, in hopes someone else will purchase it for more?

2) Create a web site that does not intend to confuse, but simply offers general information in the same area.

BTW, I'm shocked that a popular web site such as this did not go ahead and purchase the .com as well.

Update that ended up in the same post:

I notice that BananasToday.org is a brief web site that merely promotes its print magazine, with some of those printed articles viewable on it. It does not offer any articles/information that is not in the magazine. If I had a different tyoe of site that simply linked to the latest news of the industry, and had a resource list of vendors, etc. in the industry, would that really infringe? I would not pretend to be the online home of their magazine, and in fact, could say that I am not affiliated with it and could even include a prominent link to their site for those looking for it.

**DNQuest.com** · 09-01-2005, 10:00 PM

Originally Posted by slobizman

Thank you for the great explanation.

Am I infringing if I:

1) Simply buy the domain for speculation, in hopes someone else will purchase it for more?

2) Create a web site that does not intend to confuse, but simply offers general information in the same area.

BTW, I'm shocked that a popular web site such as this did not go ahead and purchase the .com as well.

Update that ended up in the same post:

I notice that BananasToday.org is a brief web site that merely promotes its print magazine, with some of those printed articles viewable on it. It does not offer any articles/information that is not in the magazine. If I had a different tyoe of site that simply linked to the latest news of the industry, and had a resource list of vendors, etc. in the industry, would that really infringe? I would not pretend to be the online home of their magazine, and in fact, could say that I am not affiliated with it and could even include a prominent link to their site for those looking for it.

1- The very definition of squatting, to profit from TM you have no intereste in.

2- I really can't answer that, I will admit that. Too many variables to give any answer at all. The content and how it is presented is subjective. Even though you may no intent to confuse, if it can confusing, you could be in trouble. a C+D will say that you intended too confuse, that is just standand threating manner. Whether you are or not is another story. I wish I could help better, but without the actual information involved, nobody can give a definitive answer. But usage of the domain and content will play a big part of any challenge.

Regardless of how the magazine used thier .org, that has no bearing that Bananas Journal is a TM. So you can't compare your site to thiers.

I am surprised that the .org would not have the .com. I do find that odd. I wonder why they did that, or if someone else had the domain and was C+Ded and they just let it expire.