Trademark a domain

[DNWizardX9]

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? ;-)

 

[Theo]

You can't trademark the domain with the extension, just the descriptive word or service by the same name.

 

[Steen]

You can't trademark the domain with the extension.

Quite false.

 

[Theo]

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).

 

[Steen]

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.).

 

[Theo]

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.

 

[DNWizardX9]

any of the DNF resident lawyers want to comment?

 

[mkx]

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.

 

[Bender]

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?

 

[mkx]

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.

 

[jberryhill]

I'd like to see REGISTERED .com trademarks listed.

Okay...

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

 

[cyberpacific]

Is that possible to have tm for my domain in usa if i'm not living in US ?

 

[DNWizardX9]

but these guys couldn't go after someone that registered the .net then... but what if they registered SPORTSWORLD?

Okay...

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

 

[dtobias]

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.

 

[jberryhill]

a really idiotic and annoying thing to do

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.

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."

 

[Theo]

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"

 

[dtobias]

"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.

 

[jberryhill]

"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.

John, did the rules change?

The relevant Examination Guide is dated September 1999, but it may have been a particular fetish of your examiner...

http://www.uspto.gov/web/offices/tac/notices/guide299.htm

 

[HOWARD]

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.

 

[mkx]

Does anyone know that if USPTO declines a trademark, they will contact the registrant for alternatives at no extra cost?