Could a Generic Keyword a TM?

[rajs1ngh]

Hi,

I have recently Won a dropped domain at very high xxx$ at snapnames. The domain is actually a highly searched single dictionary word. It is generic word and and Abstract Noun.

For example

Shy
Sad
Proud
Love
Loud

Can these word be Trademarked?

This is actually an abstract noun (Quality) and is trademarked since early 60's.

Can i loss this domain thru WIPO?

Notable thing here is that this was a drop registered domain, and not hand regestered.

Please help

 

[Theo]

You already said it's trademarked.

 

[Sonny Banks]

Depends if a company Trademarked that word.

http://www.uspto.gov/main/trademarks.htm

http://www.cipo.ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/wr00012e.html

 

[TheLegendaryJP]

Ill make this short... USE. Do your homework.

A generic word may be trademarked but it has to also be tied to a USE.

If I owned Brick.com and there was a company since the 60`s called Brick who sold Bikes had a TM etc, I am not going to start USING Brick.com for Nikes

Use your common sense and even still anything is possible.

 

[tonyfloyd]

what does Bikes....have to do with Nike sneakers???

 

[Theo]

Anyone with a registered tm can challenge a domain at the WIPO. They would have to prove that the domain is confusingly similar to their mark and that it was registered and is being used in bad faith.

 

[TheLegendaryJP]

It was a mistake B is next to N. Ment Bikes

You would have seen that if you were a tm guy lol

 

[Theo]

Maybe Nike has a new shoe out called the Brick? LOL

 

[TheLegendaryJP]

Maybe, if it did I would imagine someone would reg BikeNrick.com lol

 

[rajs1ngh]

You already said it's trademarked.

Yes, the Word (Abstract Noun) is a trademark but not the domain. Lets suppose, the word Proud is trademarked by ABC Inc. in 1963.

Now, in 2000 ABC Inc. regd. the domain Proud.biz because Proud.com, .info, and .net were already registered by 2000. Then instead of going to claim the domain Proud.com thru WIPO, they regd. .Biz which was left unregistered till then.
Then in 2008, Proud.biz dropped (It would have also been thru the domain deletion cycle and) and i wonder why did they not renewed the domain if it was a TM.
Now, since the domain dropped and went into snapnames auction, i won it for high $XXX.
The question is, where i stand in this situation? Can the domain be snapped from me?

Pls help

 

[EnricoSchaefer]

Quite possibly, you can trademark the. Your first step is to do a trademark availability search and make sure you don't tread on someone else s trademark turf. There is almost always a class of goods or services which IS NOT descriptive of the word itself. You don't have to use the domain yet. You can file an 'intent to use' mark to put your ball in play and stake your ground.

Here are some links to articles on trademarking your domain.

One of the Rarely discussed Benefits of Domain and Website Development

Of Domainers and Trademarks: Is it Time to Rethink the Bias Against Trademark Rights?

Keep in mind that there can be more than one trademark use of a word. There is Delta Faucets and Delta Airlines. Ther ei sno risk of consumer confusion between thee two brands becasue they are in such unrealted markets. The key is to develop the domain so that it does not infringe on any other previously established mark owner (i.e. do not put up a parking page which drives ad links to competitors of teh trademark holder).

 

[rajs1ngh]

UPDATE : This domain has never been used by the trademarked company for their products

 

[Theo]

UPDATE : This domain has never been used by the trademarked company for their products

That can only be affirmed by an IP attorney. Also, if it's been registering in the 1960's, to renew them every 10 years they have to establish use.

 

[rajs1ngh]

That can only be affirmed by an IP attorney. Also, if it's been registering in the 1960's, to renew them every 10 years they have to establish use.

They are using a 2 word domain for their product.

(TM)Keyword+Product

They never owned OR used this domain.

Another Update : They recently applied to renew the trademark (In Feb 2008). And the new Applied for "TradeMark" is an image and the keyword embedded in the image

 

[Theo]

I am not talking about use of the domain. Registering the domain of a product or service for which one has a tm is not necessary to establish rights to the tm. What exactly is confusing you here?

PM the name if you want, I can look up some options for you.

 

[Brett Lewis]

UPDATE : This domain has never been used by the trademarked company for their products

You may be making a distinction that does not exist. It doesn't matter necessarily whether the domain name was used or not. If the company used a trademark which is the same as the domain name, then the company satisfies the first threshold in a domain name dispute -- i.e., that it has trademark rights in a term which is identical to your domain name. That company would also have to establish that you lack legitimate rights or interests to the domain name and that you registered it in bad faith, to take it away from you in a UDRP proceeding.

The fact that you registered a dictionary word capable of many uses should often be enough to establish legitimate rights (depending on what the word is), but often is not. Panels will look at other factors -- what domains are in your portfolio? Are there competitive links on your site to the trademark holder? Are the links on any landing pages using the domain name in its descriptive sense or are they a reference to the trademark holder? Have you taken any demonstrable steps to develop a Web site? Filing an intent-to-use trademark application may help. The outcome would still depend on the totality of the circumstances. Of course, if you're thinking of developing a Web site, clearing the mark for use first is always a good idea.

 

[rajs1ngh]

Thanks for all the help guys. I NOW have found a solution of the problem. But many thanks for taking some time to try to resolve this for me.

Regards

 

[Furiouss]

I have a question myself, I'll use Brick as my example again. If "Brick" was trademarked.

Let's say Brick is a dog grooming company, and they owned Brick.com . If I bought Brick.ca and made it a g*yp**n website, would I be infringing on anything?

 

[marcorandazza]

Probably not.