Trademark issue.....Need Advice

**JB7** · 03-06-2006, 04:34 PM

Closed

**DNGeeks** · 03-06-2006, 05:21 PM

If the website existed before a TM was registered then you have excellent odds of keeping the name. BUT if you sell that name then the new owner will probably have an issue.

**JB7** · 03-06-2006, 05:33 PM

Closed

**DNGeeks** · 03-07-2006, 12:18 AM

Generic or not, they still own a TM for it. To beat that you'd have to fight the TM application and it's highly doubtful that you'd win, never mind afford it.

The seller is out to sell the domain and make money, he has no interest in protecting you against TM infringement, nor is he a TM attourney who is familiar with these types of sales. I'm not an attourney either, but my info is based from previous WIPO decisions that i have read.

In regards to his statement to you

That nobody can actually own the name because it is generic.

That is total crap. There are valid trademarks for common "generic" terms all over the place. You can also search at http://arbiter.wipo.int for domain dispute resolutions involving "generic" keywords.

**labrocca** · 03-07-2006, 12:27 AM

The seller is incorrect in telling you that because the terms are generic you can't lose it. Windows is a generic term. Terms are meaningless without usage. You want to use the domain in the same manner as a TM...that's a problem and in a case you would imho most likely lose.

**DNQuest.com** · 03-07-2006, 07:34 AM

^^^^^ Newbies, read and learn...

labrocca, you sound more like me everyday lol

As far as this thread, it seems the first usage of the TM was 1956, that is the important fact about this situation. It does not matter when the registration application was filed for this case. It is clear the TM was in exsistance since 1956, unless you can prove the website exsisted before 1956, then you are not ok.

**JB7** · 03-07-2006, 10:41 AM

lol

Before 1956 eh. I'll have to do some extensive research on that one.

**Dave Zan** · 03-07-2006, 03:07 PM

Reminds me of nissan first registered in 1959...

**jberryhill** · 03-07-2006, 03:51 PM

When you say that "a company" registered the trademark, you might consider what that company actually does. Now it may be that the nickname of a university or a college may indeed be a protectible brand for the types of souvenirs that the university sells.

But you might consider doing a bit of research into the term itself, and where it comes from. If, for example, the term is a traditional nickname or reference to a particular place or type of subject matter, then having a website about that place does not implicate the limited rights in the mark as a brand name for particular types of goods and services. You may find that there is also widespread third party use of that name as a reference to that place.

John
a resident of the second smallest state - Delaware

**JB7** · 03-07-2006, 11:40 PM

My thanks to everyone who has given me insight. I am grateful for the knowledge you share here. I now have a better understanding of trademarks from the areas you have suggested to further understand.

Many thanks to the “Diamond State”