Part of trademark

[Dominata]

I am new to this forum and thank you for letting me join.

My question is, If a company has a trademark on a group of words. ie "XYZ systems incorporated" and has on their trademark a disclaimer for the words "systems incorporated" does that mean that "XYZ" is protected as if it were the trademark"

If this same company used "XYZ.com" for their domain name and I used "XYZee" wich would be confusingly similar to their domain name but not their actual trademark, Who would be left standing at the end of a UDRP challenge?

I regged this name prior to their published first use in commerce date on their trademark but after their filing date.

What would be my legal status here?

 

[jberryhill]

My question is, If a company has a trademark on a group of words. ie "XYZ systems incorporated" and has on their trademark a disclaimer for the words "systems incorporated" does that mean that "XYZ" is protected as if it were the trademark"
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It depends on the independent distinctiveness of XYZ. The disclaimer merely states that they don't have a claim to "systems incorporated" apart from the mark as shown. Most of your questions depend upon what XYZ is. Not all trademarks are equally strong, which is why these things are very fact-specific.

The types of things that can affect the result include whether xyz by itself fanciful, arbitrary, suggestive, or descriptive? Is it a surname or geographic location?

Another important factor, of course, would be what are your reasons for having registered the domain name.

 

[Dominata]

The types of things that can affect the result include whether xyz by itself fanciful, arbitrary, suggestive, or descriptive? Is it a surname or geographic location?

I would say descriptive in the conveyance of the idea that the name depicts but fanciful because they spell it wrong.

My Domain name is the same as theirs except mine is spelled correctly.

This causes much confusion with their Email.
I tried to forward their Email and their system admin started bouncing it back to me so I discontinued this practice. I sent a note on one of the forwarded Emails not to bounce another Email or I would not forward them anymore and he bounced them anyway.

Another important factor, of course, would be what are your reasons for having registered the domain name.

The reason that I regged the name is that it is descriptive to what I do for a living (my actual job).

The company I work for is in the same business as they are.

I do not use the name in any competitive way with this company. I have a website that does not even remotely suggest the business that I am in. It is there for my entertainment and information gathering. The name is descriptive of me, the owner of the website

This Email issue is bothering me a little. I could not find any UDRP decisions based on email problems.

 

[jberryhill]

"I would say descriptive in the conveyance of the idea that the name depicts but fanciful because they spell it wrong."

Mis-spellings don't count, e.g.

"The first issue is whether the phrase SAFE-T-BALL describes characteristics, functions, properties or features of the plaintiff’s game. At the outset, we note that the phonetic spelling used by both plaintiff and defendant instills no special protection when the underlying words, spelled correctly, are descriptive of the game, See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 328-29, 59 S.Ct. 191, 83 L.Ed. 195 (1938) ( "NU-ENAMEL" treated as equivalent of "new enamel" and held descriptive of the paint); Restatement of Torts s 725, Comment A, at p. 586 (1938) (. . . 'Stabrite,' 'Keep Kleen' and 'Notaseme' cannot be trademarks if 'Stay Bright,' 'Keep Clean' and 'Not a Seam' cannot be trademarks for the same goods respectively.")." Clarke v. K-Mart et al. 473 F.Supp. 1299, 205 U.S.P.Q. 1237, (W.D. Pa. 1979).

and

American Aloe v. Aloe Creme Laboratories, 420 F.2d 1248, 164 U.S.P.Q. 266, (7th Cir. 1970) (Spelling "aloe" as "alo" does not render term capable of distinctiveness for aloe products).

You should probably consult with an attorney if this issue is of importance to you. Some folks have odd notions of what is "descriptive" or "generic". Their registration of the term for their goods and services is prima facie evidence that the term is distinctive. However, there are issues relating to the dates you mention above, and your apparent arbitrary use of the term which are probably worth looking into.