Who is…“first use in commerce"

[PalmBeach]

A lot of registrars are generating $ from links on a domains Who Is page.. Does that constitute “first use in commerce" ?

 

[jberryhill]

You are hung up on this phrase.

Let's define a trade or service mark:

A word, symbol, or device (graphic) used on or in connection with goods or services in commerce as a distinctive indicator of the source or origin of those goods or services.

Let's break it down:

1. A word symbol or device. That should be pretty simple.

2. Used on or in connection with goods or services - the mark is located on the goods, like a label, or the service is advertised as being "Jim-Bob's Tax Preparation Service" on a sign or advertisement of some kind.

3. In commerce. That is the mark is on the goods or services in such a way that someone in a position to purchase them can see that they are so marked.

4. As a distinctive indicator. Anyone can put "beer" on a bottle of beer. That's what beer is. So the word "beer" is not distinctive. The word "Heineken" on a bottle of beer is distinctive. There is a relative scale of how distinctive a mark might be. Some things are generic, like "beer". Some things are descriptive, like "light beer". Some things are geographically descriptive like, "German beer". The line between "generic" and "descriptive" is an important one, since even "descriptive" marks may become distinctive through longstanding, continuous, and substantially exclusive use. "Philadelphia" is a mark owned by Kraft for cream cheese. "New York Pizza" is a geographically descriptive term used by a lot of people. At the high end of the scale are fanciful marks - marks which do not mean anything at all, like "Xerox", "Exxon" and so forth. In the middle range are arbitrary marks - marks which do mean something, but have no connection to the thing identified. These are things like "Delta" for faucets, or "Delta" for an airline. Note that the same arbitrary mark can be used for different things, like faucets and airlines, by different people. Between "descriptive" and "arbitrary", there is a category of "suggestive" - i.e. the mark is 'kinda, sorta' descriptive, but some kind of mental act of inference is needed in order to get from the mark to the product, like "Tidy Bowl" for a toilet bowl cleaner. Using "Tidy Bowl" may get you a tidy bowl, but the product is neither tidy nor a bowl. My favorite is "Invisible Fence" for a radio dog containment system. It is not invisible, and it is not a fence.

5. Of the source or origin. You might not know WHO makes the product or provides the service, but the mark serves as an indicator that "this stuff" is the "same stuff" that you bought last time by whomever makes it. "Budweiser" beer comes from whomever makes "Budweiser" beer, regardless of whether you have ever heard of Anheuser Busch.

Whether a domain name is being used as a trademark depends primarily on whether it is - displayed on or in connection with goods or services (which can include advertising services) and distinctive of the goods or services for which it is used, If it is merely used as an address, and not as a mark, then you haven't gotten near the "date in commerce" issue. So, if I have orangutan.com, and it is the URL for a PPC page advertising supplies for keeping orangutans, then we're not even going to bother with the date issue because it is a merely descriptive identification of the subject matter to which the use of the domain name relates. If I have orangutan.com, and have a PPC page for clothing at a webpage that says "Welcome to Orangutan.com, a directory of fine clothing", then I am using a distinctive indicator of the advertising services which I am providing to clothing vendors.

The bottom line is that your question - (a) has no general answer, and (b) probably doesn't get you any closer to solving your riddle than the other thread.

 

[nWo]

"Budweiser" beer comes from whomever makes "Budweiser" beer, regardless of whether you have ever heard of Anheuser Busch.

Not totally true is it!

This issue involves United States of America and the Czech Republic. For past hundred years, an international legal dispute continued between the American brewer Anheuser-Busch and the Czech beer producer Budejovicky Budvar over the right to use the trademark name Budweiser on their products. Currently, both of the brewers produce beer beverage labeled Budweiser, and battle over who does have the legal right to the commercial use of this name. Both the brews have a long history of existence. The disagreements over the right to use the trademark started in late 1870s, when the brewers began to export their like-named products to markets beyond their national borders. Attempting to legally win the exclusive right to the trademark use, the dispute has been taken to courts in different countries. The results so far did not provide either party the exclusive right to the name, but rather resulted in the division of market.

http://www.american.edu/ted/budweis.htm

 

[PalmBeach]

Dr. Berryhill

Thanks for the professional advise

Yes I am a little hung up on the phrase “first use in commerce" because I have people trying to trademark a domain names that I: made up, registered, and, to the best of my knowledge, the combination of words in the domain name I purchased, at the time, was not being used.

I was under the impression that the if the name was being used to generate revenue than that would be considered “first use in commerce". That fact along with the documented ICCAN registration date would give the person who registered the domain ( before the trademark was applied for) some rights in the future if a trademark issue came up.

Then in the event the domain owner put the name up for sale and a buyer had a question on the pending trademark then the domain owner could put the potential buyer at ease because the domain name was registered and generated $ before the trademark( for the corresponding name ) was applied for.

Apparently this is not the case. So much for the value of a brandable domain name.

[FONT=&quot]Dr. Berryhill, in your professional opinion, what are the best steps for domain owners to take to prevent someone from obtaining Trade Mark rights to domains that the domain owner has in their portfolio? [/FONT]

 

[jberryhill]

Not totally true is it!

And this is why lawyers in general don't participate in internet forums. No, my intention is not to write a treatise here, and yes, there is a huge issue of jurisdiction and territoriality which I didn't mention at all.

Budweiser, Scrabble, Smarties, etc. are well-known examples of trademarks which are owned by different entities in different places in the world.

Because the United States is a federal system of sovereign entities, one even runs into that situation here. The mark "USC" is owned by the University of South Carolina east of the Mississippi River, and it is owned by the University of Southern California west of the Mississippi River.

Dr. Berryhill, in your professional opinion, what are the best steps for domain owners to take to prevent someone from obtaining Trade Mark rights to domains that the domain owner has in their portfolio?

You are not going to like the answer, because there is no one-size-fits all answer to that question.

It's sort of like asking a medical doctor, "What's the best pain reliever?" Well, golly, there's a lot of pain relievers, and whether any one of them is the "best" in any given situation depends on the situation.

I have people trying to trademark a domain names

When you stop using "trademark" as a verb, you'll be closer to a better question.

That fact along with the documented ICCAN registration date would give the person who registered the domain ( before the trademark was applied for) some rights in the future if a trademark issue came up.

Maybe. Maybe not. The date of registration of a domain name can be important, but it's not the be-all and end-all of any problem that may arise.

If the term is geographically descriptive, like the "Miami Pizza" example you mentioned before, and if you are using it in connection with pizza in Miami, then the trademark issue is not that important anyway.

But if I registered "xyz.com" in 2002, didn't use it for anything in particular, and then someone comes out with "XYZ" brand shampoo in 2006, and then I start using xyz.com for shampoo in 2007, then the date on which I registered the domain name is utterly irrelevant to the fact that I started infringing the XYZ shampoo trademark in 2007.

Thanks for the professional advise

My general comments about trademarks do not constitute advice

 

[DomainBuyerBroker]

Great information.
Just wanted to say thanks.