TM Domain Names

[PalmBeach]

Can someone TM a domain name that I own? Do I have any rights if I registered the domain well before they started the TM process?

 

[HomerJ]

by no means am i an expert or qualified to give legal advice, but from doing some research i am 97% positive that registering a domain name does not automatically entitle you to trademark rights for that name. so my guess is that in theory someone could register for a trademark for a name that you have already purchased. i think you would have to look for case law to see what if any rulings have been made in the past regarding this type of thing. i know that on the uspto website there is a subsection that sets out what constitutes different types of infringement and has many a reference to actual cases that have gone to trial and what the judges ruling was. if you are interested in developing the site you might want to consider spending the $30 to file the name as a tm w/ the uspto.

as far as i understand, generic words are not in and of themselves trademark-able. for example, while the term 'ABC Textiles' could be trademarked, just the word 'Textiles' alone could not, as it is a dictionary word in the public domain. also, i believe that courts have ruled that adding a .com to the end of a name does not add enough distinction that would warrant trademark consideration. so i don't think that 'textiles.com' is able to be trademarked either. hope this helps. but again, you might want to do further research of your own.

 

[petrosc]

textiles.com can be trademarked, however the applicant will not be able to register this trademark in the textiles industry. He can brand the word textiles for anything he wants except clothing and textiles. He can name a beer for example "Textiles Beer" and register "Textiles" as a trademark in the alcoholic beverages area. This is the same as Microsoft has done with the word windows. Windows is a purely generic word and a company making windows would not be able to register it as a trademark for their business. A software company like MS however can(and did) register it as a trademark and brand it as something completely different. They cannot go after someone who uses this word in his domain name, unless he operates in the same area of their trademark, that is software.

 

[DNQuest.com]

One thing not mentioned, how is the domain being used now? Has the domain owner established rights to the domain. Usage always plays an important part when there is a challenge. If the domain is being used actively in good faith, the domain owner would be able to show established rights. PAssiley holding a domain, while not is bad faith itself, does not establish rights to a domain. Criteria #2, does the domain owner have rights to a domain? Passively held domains have shown this to be "no"

 

[HomerJ]

this is a link to uspto's discussion of tlds in trademark law there is a boatload of info there, but here's a couple quickies:

Internet domain names raise some unique trademark issues. A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services.

See also Goodyear, 128 U.S. at 602 (the incorporation of a term with no source-indicating function into an otherwise generic mark cannot render it registrable). For example, if a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must refuse registration on the Principal Register under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. See TMEP §1215.04.

i would still disagree that 'textiles.com' is registrable, but that is just my interpretation, and may not be correct.

 

[MARCARIA.COM]

In order to obtain trademark protection, you need to register your trademark in every country where you want to protect it, country by country. We can help you with this process.