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Reply With QuoteYou can't trademark the domain with the extension, just the descriptive word or service by the same name.
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Lets use a real example:
I compete against Hotscripts.com so this will be a good example. I'm not using my site as part of the example.
Hotscripts.com registers a trademark so they can get the domain from people who may register hotscripts.net .info etc. Does domain trademarks really work? I'm thinking of filing a trademark on my own site and I don't know if they work but in Hotscripts case I know they have sent letters to domain owners and have been able to get the infringing domain under their ownership.
Lawyers? Advice please? ;-)
You can't trademark the domain with the extension, just the descriptive word or service by the same name.
Quite false.Originally Posted by RADiSTAR
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Please point me to the legalese on USPTO.gov that says otherwise. I had to go through the process and it was part of the requirements at that time (2000).
I have seen so many domains in the USPTO trademark search. If you would like an example, search "pf.net", or any of elequa's domains (oxide.com, mp3.tv, dj.net, etc.).
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PF.net is a dead mark. Also, the attempt was to register PF.Net Communications - a "smart" attempt but wrong regardless.
Where did you see Oxide.com as a registered mark? It does not come up in the database.
I assume he managed to register mp3.tv only because of USPTO ignorance about what the "tv" stands for.
I'd like to see REGISTERED .com trademarks listed.
Also, dj.net is NOT a registered mark - it's just applied for.
Last edited by Acro; 12-21-2004 at 01:23 AM.
any of the DNF resident lawyers want to comment?
I know the .com, .net, and other extensions play no role in corporate names. Example, Hotscripts.com Inc. is considered Hotscripts Inc. and if someone tries to incorporate the name Hotscripts.net Inc., the name will be declined or have major issues if approved.
a simple question arises:
what's the point in having multiple TLD choices (.com,.net, .biz, info, etc) if once the .com gets developed, the others cannot be, without TM issues?
Generic domains tend not have trademark issues. Also if the .net or other version is used for a non commercial purpose, there may not be issues. It really depends on the name. In my opinion, in general, the .com domain is the only domain useful for a brandable commercial business. If the .com is taken and already used for a commercial business, there is no point in registering other extensions, unless, the domain names are generic.a simple question arises:
what's the point in having multiple TLD choices (.com,.net, .biz, info, etc) if once the .com gets developed, the others cannot be, without TM issues?
Okay...I'd like to see REGISTERED .com trademarks listed.
Word Mark SPORTSWORLD.COM
Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing online gambling services, by providing a directory of gambling service providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20020211. FIRST USE IN COMMERCE: 20020211
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76369949
Filing Date February 12, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition August 20, 2002
Registration Number 2649333
Registration Date November 12, 2002
Owner (REGISTRANT) PTI Networks, Inc. CORPORATION BRITISH COLUMBIA 14717 McDonald Avenue White Rock, BC V4B 247 CANADA
Attorney of Record John B. Berryhill, Ph.D., Esq.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE
-----------
Word Mark CLUBDICE.COM
Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing online gambling services, by providing a directory of gambling service providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20020619. FIRST USE IN COMMERCE: 20020619
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76423350
Filing Date June 20, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition March 11, 2003
Registration Number 2721033
Registration Date June 3, 2003
Owner (REGISTRANT) Name Administration Inc. CORPORATION BR.VIRGIN ISLANDS Box 10518 A.P.O. Grand Cayman CAYMAN ISLANDS
Attorney of Record John B. Berryhill
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE
Last edited by jberryhill; 12-21-2004 at 08:27 AM.
John Berryhill Ph.d., esq.
John-AT-johnberryhill.com
Please do not send private messages via dnforum.com, email me directly.
Is that possible to have tm for my domain in usa if i'm not living in US ?
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but these guys couldn't go after someone that registered the .net then... but what if they registered SPORTSWORLD?
I think that using a domain extension as part of either a legal corporate name or a trademark registration is a really idiotic and annoying thing to do, and if I were dictator of the world I'd impose death by slow and painful torture on anybody who did it... but unfortunately the current legal and economic system sometimes permits it.
In some instances it might or might not be. You have to remember that trademarks work backwards from consumer perception. For example, when people are referring to the search engine, they will typically refer to "Google" instead of "Google.com". When people are referring to the large auction site, they will usually say "Ebay". But when people are referring to the online bookstore, they will typically refer to "Amazon.com" more often than "Amazon". That's just a personal observation of what people do. Your mileage may vary.a really idiotic and annoying thing to do
As far as interpreting scope of trademarks in the abstract, that's generally not a productive exercise as compared to asking the question of whether "THIS is likely to generate consumer confusion relative to THAT."
John Berryhill Ph.d., esq.
John-AT-johnberryhill.com
Please do not send private messages via dnforum.com, email me directly.
John, did the rules change? In 2000 that I went through the process there was an explicit note that you could apply for trademark registration for "goods" but not for "goods.com"
"Google" and "Ebay" are pretty distinctive names, which don't need a domain suffix on them for people to know what they are. "Amazon", on the other hand, has a number of other meanings, so I can understand why people might make sure it's clear they're referring to the Web site by putting the ".com" on it.
Right. And that's the general point. For whatever reason, people do or don't think of the names with the TLD attached. In terms of enforcement, it is unlikely to matter, as this stuff tends to work by analogy to "800" telephone number cases."Amazon", on the other hand, has a number of other meanings, so I can understand why people might make sure it's clear they're referring to the Web site by putting the ".com" on it.
The relevant Examination Guide is dated September 1999, but it may have been a particular fetish of your examiner...John, did the rules change?
http://www.uspto.gov/web/offices/tac...s/guide299.htm
John Berryhill Ph.d., esq.
John-AT-johnberryhill.com
Please do not send private messages via dnforum.com, email me directly.
The important thing to remember is whether the words to be trademarked are distinctive, descriptive or invented. Usually adding the DOTCOM to the word does not add anything unless it is branded such as AMAZON.COM. The word Amazon can be used for various different categories and registered as such, so long as you don't use it to sell books. If the USPTO doesn't believe that the DOTCOM adds to the description or the mark, they MAY choose not to register it.
Howard Neu, Esq.
Does anyone know that if USPTO declines a trademark, they will contact the registrant for alternatives at no extra cost?
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