Trademark a domain

[DNWizardX9]

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

good question

 

[Theo]

If further information is required to establish a mark, yes. If the mark registration is declined right off the bat, no.

 

[jberryhilljberryhill is verified member.]

If the mark registration is declined right off the bat, no.

It depends on the nature of the refusal.

 

[mkx]

Fair enough. I was thinking like if the description of the trademark is not detailed enough or if the name was to simular to another one

 

[jberryhilljberryhill is verified member.]

I was thinking like if the description of the trademark is not detailed enough or if the name was to simular to another one.

The description of goods and services often needs to be revised for any of several reasons. There is no charge unless the description adds additional classes.

If the proposed mark is similar to another one, then under appropriate circumstances, you have the opportunity to explain why such confusion would not cause a likelihood of consumer confusion. For example, the marks may be used in different channels of trade, the goods and services may be sufficiently distinct (as perhaps amended for clarity), etc.

 

[namedropper]

Correct me if I'm wrong here, but having a trademark on a logo that happens to have a .com in the illustration isn't quite the same thing as having a tradeamark on the .com itself. You are trademarking the image, which happens to incorporate the .com, not the domain name itself.

So what Radistar says about the .com (etc.) not being part of a normal trademark would still be right, the way I see it. USPTO rules say that the .com part is not trademarkable.

 

[jberryhilljberryhill is verified member.]

Correct me if I'm wrong here

It's not a matter of right or wrong, it's a matter of what is generally called the "commercial impression" of the mark as a whole.

Take a look at this picture:

http://dbeveridge.web.wesleyan.edu/wescourses/2001f/chem160/01/Photo_Gallery_Humanities/picasso/images/Les_Demoiselles_d'Avignon.jpg

It is Les Demoiselles d'Avignon. Now, I'm not sure whether there are three or four mademoiselles in that picture, but if there were only two, would it still look like a Picasso? Probably. How about if it were only the collection of fruit on the tablecloth? Maybe not. That fruit, considered by itself, looks like it might have been drawn by any of a number of contemporary artists.

".com" by itself doesn't perform a source-indicating function. The USPTO has taken the position that a generic or descriptive term, in combination with ".com", remains generic or descriptive. That view could change, as it has also changed relative to 800 numbers. For example "Mattress" is the generic term for a mattress, and 800 is common to a lot of toll-free telephone numbers. But, 1-800-Mattress has been considered to be capable of acquiring distinctiveness as "those toll-free mattress guys that advertise on the Howard Stern show".

One difference between domain names and 800 numbers is that telephone numbers are, fundamentally, numbers and not alpha designators, whereas alphanumeric domain name strings are nothing other than alphanumeric domain name strings. So, I'm not convinced that ".com" situations and "800" situations are entirely analogous.

 

[oberheimer]

ok but if there are alot of other trademarks lets say for example "lunker"
the owner decided to reg the trademark "lunker.com" because there where alot of trademarks with only "lunker"
How would you do
"boo.com" is also trademarked.
Is'nt it safer to trademark the name + .com (if there are alot of other trademarks with only name)

 

[oberheimer]

i might reg a trademark on a name that im going to buy, there are 2 trademarks for "domainname" that was regged before the domain was. So should i reg "domainname" or "domainname.com"
im going to develop some clothing business. They are'nt doing anything with clothes but i have big planes for the site and name so i thought it would be best. It's also a one word .com

 

[namestrands]

Of Course you can TradeMark a domain.extenstion...

However HotScripts Would have to Register the .net .Extension whatever as TradeMarks to stop potential violation

Just because they Owned the .com as a trademark it does not Give them any rights to the other .Extension

 

[Dr. Domaining]

Yes, it is. As John already proved the point.

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.

 

[carlton]

Have a look at ...

Miami.com

Charlotte.com

in the USPTO database. Both Registered.

 

[dtobias]

Have a look at ...

Miami.com

Charlotte.com

in the USPTO database. Both Registered.

It seems the USPTO doesn't always follow its own stated rules; they say that the TLD doesn't have source-identifying significance, so its inclusion in a trademark is irrelevant; if this is the case, then a purely generic thing like a place name shouldn't get any more trademark status for the addition of ".com" at the end than it would have alone. While a place name can be used as a trademark for things other than information about the place itself (e.g., Philadelphia cream cheese), simply putting up a Web site about Miami would seem to be an entirely generic use of the city name.

 

[jberryhilljberryhill is verified member.]

Have a look at ...

Miami.com

Charlotte.com

Okay.....

Miami.com :
Register SUPPLEMENTAL

Charlotte.com :
Register SUPPLEMENTAL

Both applications were refused registration on the Principal Register on the ground of descriptiveness, and were amended to the Supplemental Register.

Yet another misreading of an entry in the USPTO database.

For those not familiar with the Supplemental Register....

http://www.arb-forum.com/domains/decisions/112600.htm
-----
Acceptance by the USPTO of a mark for publication on the Supplemental Register does not in and of itself establish that Complainant has rights in and to the mark. Registration on the Supplemental Register is not prima facie evidence of the validity of the registration or of the registrant’s ownership of the mark or of the registrant’s exclusive right to use the mark in commerce. In re Federated Dept. Stores, 3 U.S.P.Q. 2d 1541 (T.T.A.B. 1987).
-------------

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-1103.html

The second point that needs to be addressed is whether or not a trademark registered in the USPTO's Supplemental Register confers any rights. In America's Community Bankers Corporation v. Charles R. Wing and Wind Broadcasting, Inc., WIPO Case No. D2000-1780 the case was made that "Relying solely upon the Complainant's registrations on the Supplemental Register, the Panel must conclude that the marks…are descriptive terms that have not acquired distinctiveness. Accordingly, the Panel finds that the Complainant has not proven the first prong of the UDRP, which provides that the complainant must have rights in the mark upon which the complaint is based." In another case, CyberTrader, Inc. v. Gregory Bushell, WIPO Case No. D2001-1019, the Panelist states that the Supplemental Register "provides the Complainant with no protectable rights" in its marks. In his opinion descriptive marks are not eligible for federal trademark protection absent a showing of secondary meaning. Also, in that case reference was made to pending trademark applications: "Mere applications for registration do not prove any protectable rights". Finally, the aspect of possible common law rights were covered in John Gard v. Francesesco Spina, WIPO Case No.DBIZ2002-00167 where the view regarding marks registered in the Supplemental Register was put as follows "…not only does the mere application to register give rise to no rights, the fact that the registration in the Supplemental Register is evidence that there were no rights at common law at the time of the application."

simply putting up a Web site about Miami would seem to be an entirely generic use of the city name.

No, building a city in south Florida and calling it "Miami" is a generic use. Building a website about that city, and calling the website "Miami.com" is a descriptive use. "Miami" is not a generic term for a website, just as a magazine called, say, "The New Yorker", which contains items of regional interest to people in New York may be a descriptive use. Descriptive uses are capable of acquiring distinctiveness over time through exclusive use and consumer recognition. The magazine certainly has, whether either of these two websites has is an open question.

 

[namestrands]

touché

 

[dtobias]

If, for the sake of argument, "miami.com" were to become distinctive, and hence protectable as a trademark, then what exactly would be an infringement of it? Could another site call itself "miami.info" or "miami.org" or "miami.net" and also offer info about Miami of a similar nature? Could sites about more specific aspects of Miami use names like "miamirestaurants.com" and "nightlife-in-miami.com"? Or would all those things be considered trademark violations?

 

[jberryhilljberryhill is verified member.]

Great questions. I would expect the scope to be narrow.

 

[carlton]

Great questions. I would expect the scope to be narrow.

The scope of protection should be as narrow as possible for use of a descriptive term like Miami. Unfortunately, certain companies aim to drive away all potential competition and will grossly overstep ... threatening with C&D built on bluff, not substance.

 

[David G]

I used to work for a company that had the "name.com" TM, not "name". I even saw the paperwork, so I know it to be true. Anyway, I wonder if there are complications TMing a domain, when you don't legally own the tld, you pay yearly to use it.

I have seen MANY domains with the tld ext trademarked successfully, but many attorneys and guru's claim not possible. I have spoken to attorneys who said it was impossible. Even trademark attorneys at the USPTO Office told me there was no way

Go here for examples (see post 5 in thread):

http://www.dnforum.com/showthread.php?t=82301

 

[Dave Zan]

I have seen MANY domains with the tld ext trademarked successfully, but many attorneys and guru's claim not possible. I have spoken to attorneys who said it was impossible. Even trademark attorneys at the USPTO Office told me there was no way

Go here for examples (see post 5 in thread):

http://www.dnforum.com/showthread.php?t=82301

Perhaps a forum discussing this amongst themselves is in order? :-D