my domain is different from mydomain for a TM? - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**alwaysthinking** · 06-03-2008, 07:39 PM

I was doing some research on USPTO site and realized that results for two words with or without a space between them produced different TM results.

So how does one file a domain name for TM that has 2 words in it?
Would you file it as mydomain or my domain?

**jberryhill** · 06-04-2008, 12:16 PM

A domain name is not necessarily a trademark unless it is used as a trademark.

It' s a little hard to make sense of the question, and the question itself suggests that you probably need a lot more help than this specific question.

The simple answer is that if you are applying for trademark registration, then the application should be for the mark as used on the recited goods and services.

E.g.

You are using "abcdef.com" as a domain name for your site which sells "ABC DEF" brand widgets. The packaging on your widgets is labeled "ABC DEF".

The mark, in that case, for which you would consider registration is "ABC DEF".

**Acro** · 06-04-2008, 12:44 PM

I want to play devil's advocate for a second

The trademark is "spider-man". Does "spiderman.com" constitute a trademark infringement? In other words, does a hyphen or a space affect a mark?

**fab** · 06-04-2008, 01:17 PM

I think the OP is referring to sites like YouTube.com, who services are limited to the web-site itself. Assuming they would like (if they haven't already) to TM their name, how would they go about it.

Some of us have limited understandings of TM's.

**saatmarket** · 06-04-2008, 03:26 PM

Quote:

Originally Posted by jberryhill

A domain name is not necessarily a trademark unless it is used as a trademark.

It' s a little hard to make sense of the question, and the question itself suggests that you probably need a lot more help than this specific question.

The simple answer is that if you are applying for trademark registration, then the application should be for the mark as used on the recited goods and services.

E.g.

You are using "abcdef.com" as a domain name for your site which sells "ABC DEF" brand widgets. The packaging on your widgets is labeled "ABC DEF".

The mark, in that case, for which you would consider registration is "ABC DEF".

thanks for the explanation.

**alwaysthinking** · 06-04-2008, 03:36 PM

Let me add a little more. Lets say my domain is coolshirts.com.
I would like to sell cool looking shirts, tshirts etc from my online store hosted at coolshirts.com.
At the same time I know some one had a TM for cool shirts and they manufacture shirts.
How would I TM my domain name or my business or both?
Or am I screwed here cause some one already has a TM for 'cool shirts'?

**jberryhill** · 06-04-2008, 04:53 PM

Quote:

I think the OP is referring to sites like YouTube.com, who services are limited to the web-site itself. Assuming they would like (if they haven't already) to TM their name, how would they go about it.

You are missing the point, actually a couple of points here.

If I was using blah.com as a website at which people shared photos, then I'm certainly providing a service.

The question is what am I using as a mark. Consider the following scenarios:

1. You could go to www.blah.com, and I could have a page there saying "Welcome to JohnnyB's Photo House" and no mention of either "BLAH" or "BLAH.COM" on the web site. In that situation I am not using either BLAH or BLAH.COM as a mark on or in connection with the service. I am using "JohnnyB's Photo House" as a mark for the service.

2. You could go to www.blah.com and I could have a page there saying "Welcome to the Blah photo sharing service". In that case, I am using "BLAH" as a mark for a photo sharing service.

3. You could go to www.blah.com and I could have a page there saying "Welcome to the Blah.com photo sharing service". In that case, I am using "Blah.com" as a mark for a photo sharing service.

Your attempted distinction of "services limited to the website itself" is a distraction.

Read Section II of this:

http://www.uspto.gov/web/offices/tac...s/guide299.htm

And then come back here and explain In re Eilberg in your own words.

**fab** · 06-04-2008, 05:54 PM

That was extremely helpful, and the link especially. I will need to reread that a few times.

**alwaysthinking** · 06-04-2008, 06:07 PM

I just wanna protect my domain name and open an online store.

Would the following work?
File TM for "mydomain" as On-Line retail store selling toys and products.

**theinvestor** · 06-04-2008, 06:24 PM

alwaysthinking,

Check the trademark. jberryhill just clearly stated to you...if the "mark" of the domain is taken you can not use it to sell toys and products especially if that's what it is selling. You can not own the trademark for GM and try to sell cars with the mark "GM".

If this is what you are trying to do ...then you cannot trademark it.

BTW - Being very vague will not get you an answer.

**fab** · 06-04-2008, 06:29 PM

I think the answer was given, although somewhat complex, which is not definitely.

You have two options:
1. Read through JB's post thoroughly, as well as the link,
2. Hire a lawyer, which you should do anyways if you want to TM.

Based on what I've read, which as I said, I need to review more thoroughly, you will need to associate the TM, which you as your domain name as the product server. So lets say your sight is JackFunToys.Com; your site should say -
"Jacks Fun Toys - The leader in online selling of toys and products."
"Jacks Fun Toys - The place to get toys"

You therefore associate Jacks Fun Toys with the selling of toys, and that creates a TM, which can be registered.

You would then register the TM Jacks Fun toys and not JacksFunToys or JacksFunToys.Com

Now lets see what grade I get on my law exam!

**alwaysthinking** · 06-04-2008, 06:36 PM

Quote:

Originally Posted by fab

I think the answer was given, although somewhat complex, which is not definitely.

You have two options:
1. Read through JB's post thoroughly, as well as the link,
2. Hire a lawyer, which you should do anyways if you want to TM.

Based on what I've read, which as I said, I need to review more thoroughly, you will need to associate the TM, which you as your domain name as the product server. So lets say your sight is JackFunToys.Com; your site should say -
"Jacks Fun Toys - The leader in online selling of toys and products."
"Jacks Fun Toys - The place to get toys"

You therefore associate Jacks Fun Toys with the selling of toys, and that creates a TM, which can be registered.

You would then register the TM Jacks Fun toys and not JacksFunToys or JacksFunToys.Com

Now lets see what grade I get on my law exam!

Here is the catch to this whole situation.
What if the domain name is only funtoys.com? Generic like that.

**fab** · 06-04-2008, 06:42 PM

Here is the point regarding generic terms:

Quote:

V. Generic Refusals

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. See TMEP §1209.01(b)(12) regarding marks comprised in part of "1-800" or other telephone numbers. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks.

Example: TURKEY.COM for frozen turkeys is unregistrable on either the
Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the
Principal or Supplemental Register.

**alwaysthinking** · 06-04-2008, 06:45 PM

So generic domain names or not protect able?
If I have funtoys.com and company name funtoys corp. can sue me for the domain name?

**fab** · 06-04-2008, 06:59 PM

As far as taking the domain name away.

1. Generally most domain names are contested by UDRP by either NAF or WIPO, although they can be contested in civil court as well.

2. FunToys Corp. is a company name, not a TM, so you would have to see if they have a TM,

3. If Fun Toys Corp. has a TM, they could as well sue you for damages in civil court.

At this stage, your best bet is consulting a lawyer.

The two active ones here are -
JBerryHill from this thread,
and Brett Lewis
and there is a new member as well Deborah.

I think your case is too to fact specific, for getting a clear enough answer here, as well as the fact that if you'd like to file for a TM and get the job done you'll need one anyways.

**alwaysthinking** · 06-04-2008, 07:14 PM

Actually I learnt a lot from this thread. Just one more question.
What text usage is better when filing for a TM for domain name.
just 'domainname' or 'domainname.com' or 'domain name dot com'

Nevermind. I think its better to just go with 'domainname'.

**fab** · 06-05-2008, 07:20 AM

Quote:

Actually I learnt a lot from this thread. Just one more question.
What text usage is better when filing for a TM for domain name.
just 'domainname' or 'domainname.com' or 'domain name dot com'

Nevermind. I think its better to just go with 'domainname'.

This was already discussed in this thread, and the link JB provided.
It depends how you use the mark to describe your service or product.

If you use Fun Toys, then Fun Toys,

if you use FunToys then FunToys,

.com doesn't generally have any meaning but if you use, FunToys.Com; then FunToys.Com

**jberryhill** · 06-05-2008, 08:56 AM

Fab, I believe you have captured the fundamental point here.