Domains like ****Guide.info or .com - trademarks??

[JuniperPark]

I've been directed to look at a USPTO registered trademark for a domain like the one on the title, where **** = 'prom', which is a generic name for a high school event.

This doesn't seem trademarkable -- the **** is generic, and the word 'guide' is generic term for providing information about the first term, in common everyday language (not 'fanciful').

Shouldn't this trademark have been rejected? It looks like this specific one only covers printed media, but the owner is trying to harass me with it anyway.

 

[DNQuest.com]

Upon reading it again, I may be getting confused. Itstates Tyed Drawing which I thought it to mean a logog and not the actual words themselves.

This can be considered descriptive in nature and the registration does state no rights to the word "guide"

edited cuase no so sure with my first response.. hoping John can clarify.

 

[JuniperPark]

First of all, thanks for taking the time to look it up and respond to my post!

I too noticed the attorney name -- I thought maybe it was John's mom?


I see the "typed drawing" comment on most of the registrations I see, but the descriptions always seem to indicate it's more than just the logo. In this case:

G & S: PRINTED MATERIAL, NAMELY MAGAZINES, PAMPHLETS, FLYERS, BROCHURES, STATIONERY, CALENDARS, DECALS AND PERIODICALS CONTAINING INFORMATION AND ADVERTISEMENTS PERTINENT TO PROMS, FASHIONS, TRANSPORTATION AND OTHER SUBJECTS OF INTEREST TO TEENAGERS.

My interpretation is that this one is specific to PRINTED material, so I'm not that concerned about this particular one, but the whole idea of getting a trademark on _____ Guide seems just wrong and too far reaching, especially if it begins to apply to domain names.

 

[DNQuest.com]

I will admit I see that too and sometimes wonder. I read it again now I'm getting myself confused. Maybe John can help on this one.

 

[jberryhill]

First, "typed drawing" indicates that it is a word mark.

This one appears to be the title of a magazine. Without going into a digression on magazine title marks, which live in their own TM world, note:

Register PRINCIPAL-2(F)

What this means is that the application was initially refused registration as being descriptive. In response, the applicant provided evidence of longstanding continuous exclusive use of the mark, consumer recognition, and so forth.

To get a feel for what is required in these situations, click on the TDR button, and take a look at the incoming paper that was filed in support of the 2F distinctiveness claim.

I too noticed the attorney name -- I thought maybe it was John's mom?

The attorney, Monique Berryhill, passed away in 2005 and was not related to me:

http://www.besla.org/monique.aspx

 

[DNQuest.com]

Thanx John. So the question now would be, in the domain world, could this still be fought as descriptive if the usage was based on the description of the doamin itself? (I think I asked that clearly).

I am one that sides on TMs, but even I have to question this. I know the answer may be involved, but looking for personal knowledge.

 

[jberryhill]

The better question is "can someone do this when I am using a domain descriptively".

The obvious answer is that your use, if made during the period over which the applicant intends to claim "exclusive use" is a counterexample which defeats their claim.

I'm not really sure what you are asking.