Can a trademarked commonname dot com restrict commonname dot somethingelse?

[atomant]

Hello.

If a descriptive, relatively common name (e.g. historically used and is still being used as a pronoun, adverb, nickname and endearing name) has a registered trademark for merchandising purposes as e.g. commonname dot com, does that legally restrict others from using commonname dot info or commonname dot somethingelse?

Thanks.

 

[YOYOYO]

The real answer is, it depends on alot of different things...

That's why udrp cases are filed. Different parties have different opinions about the same domain name.

Give us a better hint of the kind of name you're talking about...

You can at least use the domain name until someone challenges you, then it will be time to decide what you really want to do.

If it's a really good name that you intend to spend time and money on for a website, you can file for a trademark yourself for the name.

A word of term can have numerous trademarks granted if they all all for different purposes.

 

[atomant]

Thanks for your reply, YOYOYO.

The name is 'FAT HEAD [INFO]'.

People still use this term in different ways and have used it for many years past (at least in the 1940's and beyond) and put it on T-shirts way back when. I'm sure folks will continue to use it well into the future.

Thanks.

 

[Cartoonz]

the ways in which you *might* actually be able to use the .info are so narrow and obscure that it is not worth the reg fee.

The .com has a REGISTERED TM for the term in a very broad assortment of categories.

 

[YOYOYO]

Okay

So there are four trademarks for FATHEAD

Are any of these four the one that has contacted you? There does seem to be alot of people recently who claim they have a trademark when they really don't.

Just today in the local paper of the town I live at in Florida, the most well plastic surgeon in town has an ad that has a tag line that says "Let's get Naked" with a TM mark beside the phrase. He does facelifts and body sculpting. I checked both federal and Florida trademarks, and he doesn't have federal or a Florida trademark for the phrase.

Word Mark FATHEAD
Goods and Services IC 009. US 021 023 026 036 038. G & S: Downloadable software in the nature of a mobile application
Owner (APPLICANT) Fathead, LLC LIMITED LIABILITY COMPANY DELAWARE 1046 Woodward Avenue Legal Team Detroit MICHIGAN 48226

Word Mark FATHEAD
Goods and Services IC 016. US 002 005 022 023 029 037 038 050. G & S: Posters; adhesive plastic film with removable paper for mounting images for decorative purposes. FIRST USE: 20050922. FIRST USE IN COMMERCE: 20050922
Owner (REGISTRANT) Fathead, Inc. CORPORATION OHIO Suite 135 1136 St. Gregory Street Cincinnati OHIO 45202
(LAST LISTED OWNER) FATHEAD, LLC LIMITED LIABILITY COMPANY DELAWARE 1046 WOODWARD AVENUE LEGAL TEAM DETROIT MICHIGAN 48226

Word Mark FATHEAD
Goods and Services IC 025. US 022 039. G & S: men's and women's clothing namely, shirts, sweat shirts, t-shirts, tank tops, pants, snow pants, jackets, sport coats, shorts, hats and beanies. FIRST USE: 20000701. FIRST USE IN COMMERCE: 20000701
Owner (REGISTRANT) MENCANIN, STEVE INDIVIDUAL UNITED STATES 25611 Blossom Park Lake Forest CALIFORNIA 92630

Word Mark FATHEAD
Goods and Services IC 031. US 001 046. G & S: fresh produce, namely iceberg lettuce, romaine lettuce, redleaf lettuce and greenleaf lettuce. FIRST USE: 19951100. FIRST USE IN COMMERCE: 19951100
Owner (REGISTRANT) BARKLEY, ROBERT K. INDIVIDUAL UNITED STATES P.O. Box AE Somerton ARIZONA 85350

IC 009 - IC 016 - IC 025 - IC 031 - are the four different classes for which the trademark was granted.

It depends again on how you intend to use the website. If you have an extended business plan for a specific product it would be worth the cost to register as a trademark. Otherwise if you just have landing page for ppc then ther really isn't a basis for which you can file for a trademark. You need to have a specific product or srevice for which you are filing for a Trademark or Service Mark.

A Service Mark is different than a trademark in that it represents an acutal service you perform for a customer. For example if you had a Framing Shop were you sold ready made frames called - FATHEAD -, you could apply for a trademark. If you also offered custom made frames for customers, which most Frame Shops do, you could also apply for a - Service Mark -.

A Service Mark has the same legal standing as a Trademark.

http://www.uspto.gov/trademarks/index.jsp

 

[Cartoonz]

So we have Software, Produce, Clothing, and Images pretty much off limits...
Unless you were going to start a custom Motorcycle business, which you would still likely run afoul of the Posters TM when advertising, it seems your options are seriously limited.

Keep in mind, any of the 3 TM holders can come after you, regardless of if you feel their claim has merit or not.... The question begs; how much are you willing to spend to defend against that?

 

[atomant]

Thanks to you both for your replies.

From what I can see, based on the granted trademarks and their classifications, there are a number of ways to use 'Fat Head' without infringing on existing trademarks.

I do appreciate your info.

Thanks.

 

[Cartoonz]

Well, just keep in mind that *your* idea of "non-infringing" may not be the same as *their* idea about it.
UDRP is cheap and usually successful in situations like this one. Federal Court is far from inexpensive and can bring a defendant to ruin, even if the case *seems* baseless, so be careful.

Sure, there may well be a number of ways to "use 'Fat Head' without infringing on existing trademarks", but are any of them really worthwhile in the long run?