Partial trademarks

[marwin]

Lets assume that I own the domain gizmo.com. What if some company has a trademark for "gizmo shop" (a made-up word and a dictionary word coupled). Is there any risk that they could hi-jack the domain because the made-up word makes it similar to their trademark, or must the full trademark be part of the domain name? Worth mentioning is that another company actually owns the trademark for "gizmo", but they don't seem to be interested in it.

[draqon]

Well Marwin, here is the answer to your question. Keep in mind I am not a lawyer:

1) If a company has a trademark for MadeupWord + Dictionary word, then you can basically be sure that they have trademark rights for MadeUpWord. Trademark law focuses on the part of the trademark that is made-up and pretty much disregards the weaker and less distinguishing part of the trademark (which is the dictionary word).

2) The fact that some unrelated company has a trademark for MadeUpWord is not very important to the matter.

3) Whether or not you lose your domain depends on
(a) just how unique this madeup word is. if its as unique as cocacola or Barcalounger (a type of chair) then your position is pretty weak. if the madeup word is just an acronym like ABC or FER then your position is stronger.
(b) how you are currently using the domain is of vital importance. do you have advertisements up that are in the same area of commerce as the other company? does your site look like their site, or attempt to confuse visitors into assuming your site is associated with theirs? these are what determines how risky your situation is.

[jberryhill]

What if some company has a trademark for "gizmo shop"

Draqon's comments are right on point. Folks really need to get away from the notion of "has a trademark" when they are referring to a registration. Whether a company "has a trademark" depends on whether the term in question functions as a distinctive indicator of the source or origin of the goods. If the "gizmo" portion of the registered mark is, standing alone, recognized by consumers as distinctive of those goods or services, then the company "has a trademark" for "gizmo", whether or not it is all or a portion of a registration.

[marwin]

Thank you for the excellent responses, I really appreciate it.

I guess "shop" was a bad choice for the generic word as they wouldn't name a product that. The trademark "Coca Cola" is actually a pretty good example of what I mean if you consider "coca" a made-up word and "cola" a dictionary word. What if I owned the domain coca.com and they market their product as "Coca Cola" (never as only "Coca", and I don't think people call it that either). Would I need to worry about them being able to get the domain if it was used for something completely different? What if the web site was used as a non-profit web site that simply offers helpful information about "Coca Cola" (news, reviews, discussions)? I understand that I would have to make it very clear that I was not authorized or endorsed by "Coca Cola".

[jberryhill]

Coca Cola may not be the best example either, since it is a cola drink made with a coca extract (it still is, actually, but the interesting alkaloids are removed from the coca first). Coca and cola are both tropical plants.

A better example might be "Pepsi Cola", but do you notice while nobody calls "Coca Cola" Coca, everybody calls "Pepsi Cola" Pepsi. That's the thing about made-up words that makes them inherently strong trademarks - they aren't associated with anything other than the goods or services to which they are applied.

[marwin]

The problem with using Pepsi is that they've actually registered the "Pepsi" trademark, but I get your point. So even if Pepsi only registered the "Pepsi Cola" trademark they would be entitled to pretty much any domain that contains the word "Pepsi"?

[jberryhill]

Well, that's quite a leap from "having a trademark" to "entitled to pretty much any domain".

Somebody cue Tassos to remind me what "Pepsi" means in Greek...

[marwin]

Well, from looking at old WIPO decisions it's obvious that companies are able to get pretty much any domain they want that includes a trademark and any other word (pepsi collectibles, pepsi downloads, pepsi tennis, pepsi simulator, pepsi 3d, etc), which im not really questioning at all. However, if a company that uses the trademark "Pepsi Cola" can get the domain pepsi.com, I would assume that they could also extend that to get other domain names that includes the word "Pepsi" just as easily.