'DUBS' legal issues?

[abdulla]

Hello,

I have read confusing posts about 'slang' words. Dubs is a slang word for wheels that are 20inch or bigger. 'DUB' is a trademark held by dubmagazine.com, so is there any potential legal problems with domains like those? I mean if I get a domain 'dubs.*TLDHERE*', and say I develop it into a wheels website, will there be any possible trademark issues i have to deal with? I have seen websites that use the term 'dubs' in their domain such as: 'rollingondubs.com' - this site even has the trademark for 'rollingondubs.com'. So can you please help me out here, because im new to legal stuff.

Thanks.

 

[Gerry]

I think it is generic. "I call dubs on the front seat" (also "dibs") and it is a common word used for making a copy of a tape or recording are things that comes to mind. The logo may be TM but not the word. So does that mean someone infringed or stole words we used as stoners when we were teens.

That's like me getting a letter from the BIG shots that my domain Yahooisms.com is an infringement (it is in the dictionary before Yahoo existed and Yahoo is an infringement on earlier Mountain Dew commercials). When I pointed this out and that we good ol' southern boys were using Yahoo long before there was this thing called 'lectricity, that was the end of that.

And ebay's legal team warning me against using, selling or marketing MaineBays.com. My wife and I were planning an extended Kayaking trip along the coast of Maine on up into Nova Scotia and this was going to be our online journal and photosite.

I told ebay they did not own the alphabet and all words or any combination of words e-b-a-y and I was going to look up the rightful heirs of the namer and founder of CheasapeakeBay and the botinist who discovered the native wildflower RoseBay and persuade them and join them in a class action lawsuit against eBay for infringing on their rights. Never got a response.

I am not your legal counsel but I see no issue with the word DUBS. And by the way, I plead the 5th on the comment about being a stoner.

Oddly enough, I still own those domain names.:drum:

 

[Keith]

A 'dub' is also slang for Volkswagen (v-dub). So you could make it a site promoting (v-)dub wheels.

 

[DNQuest.com]

There is a difference when something is coicidental and used in good faith as opposed to knowingly registering a name based on a TM and then compete against the TM holder. First of all, you admit to the TM. Second, you admit you want to use it to compete against the TM holder using thier very name in a field which they are known.

If you want to use the domain, then do it in a field which has nothing to do with the TM holder. If you say "then I won't make any money", that means you plan to cybersquat...

 

[Gerry]

Doubtful the word "dubs" itself is TM. "dub" for the magazine and the magazine logo are most likely TM. Even the word dub is not trademarked. The logo and the way it is used by the magazine is a trademark, not the word. If so, then the dictionary is in violation and the internet is in violation. Oh, along with the kings and queens of England who use to "dub thee, Sir Knight".

Who owns or claims rights to the word "domain"?

If dubs is TM, then I want a piece of the pie because we used to dub over commericials with sound effects and voice overs when I was in advertising.

If dubs is slang for spinners or hubcaps, then so be it. So is "9's"...9mm pistol and the number "13"...represents the 13th letter of the alphabet...the letter "M" to designate Marijuana. Again, I plead the 5th.

Right now there are 3,550,000 returns on google for "dubs", not to include the 4753 listings currently on ebay for "dubs". And every major tire and wheel seller on the internet are selling "dubs".

I think you'll be far down the list of defendants should someone claim rights to a word that has been in use for centuries.

So, I hereby dub thee SirDubs.com

 

[Gerry]

Looks okay.

Not sure what I like better...the lingo, the explanation, the description, the terminology...or that picture of Al Pacino as Scarface. It's all good!

 

[Deleted member 5660]

You obviously didn't do step 1 when you do a trademark search. Go to www.uspto.gov and search on DUB. You will se a whole series of DUB trademark applications/registrations. The interesting part is that DUB Publishing, Inc. has a series of applications that are being published for oppostion in 2 days! This means you have a 30 day window to oppose their registrations of the term DUB. Of course you would need to file legal documents which are complicated and you need to pay fees for each opposition (and for seperate fee for each class where you oppose the mark).

 

[Gerry]

Please understand that a "trademark" is exactly that...a trade mark.

The word itself, DUB, is not being "trade marked" but their logo and how they use the word in distinguishing their own branding is being "trade marked". There appears to be quite a bit of confusion over what a TradeMark is.

1. any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.
2. a distinctive mark or feature particularly characteristic of or identified with a person or thing.
–verb (used with object)
3. to stamp or otherwise place a trademark designation upon.
4. to register the trademark of.

I highlighted the word "word" because 99.9999% of the time if it is already in the dictionary, the word as it stands by itself can not become trademarked or registered or copyrighted.

We are talking about a word that is centuries old and no one can lay claim to it.

No, I am not an attorney but I have been an advertising and marketing executive for years and I know the ins and outs of these issues as we often branded a "TradeMark" for many clients. I worked very closely with not only our own corporate attorneys but corporate attorneys of international multibillion $$$ firms on copyright, trademark, service mark, and other matters regarding registering of patents, trademarks, service marks, and copyrights.

Google is a Trade Marked name and a Trade Marked word. That is an exception...the word Google did not exist until it was created. It is the very definition of itself that you will find in a dictionary;

Goo•gle (gōō'gəl) Pronunciation Key
A trademark used for an Internet search engine. This trademark often occurs in print as a verb, sometimes in lowercase

Winston is a brand of cigarettes from RJR Reynolds tobacco. Do you think Winston is a Trade Marked word? No...their brand is, their logo is, their packaging is.

Otherwise I have violated the law each and every time I write the address of Winston-Salem, NC and naming one of my cats Winston.

The word “coke” is not even a copyrighted word or a trademark as the word itself. It has multiple meanings and uses. But if you reproduce the Coke or CocaCola logo without permission, then you have violated their copyrighted and registeted trademark.

Hells bells, if you think that "dub", "dubs", "dubbed" are trademarked or copyrighted words, then we are all liable and defendants for repeating the nursery rhyme, "Rub a dub dub, three men in a tub..." and if you are teaching your kids this rhyme, then you are aiding and abetting a criminal

 

[abdulla]

Thank you all for your input, this really helped.

edit:
I just checked the trademarks, one of the live ones is the following:

Typed Drawing
Word Mark DUBS
Goods and Services IC 012. US 019 021 023 031 035 044. G & S: LAND VEHICLE PARTS, NAMELY WHEELS. FIRST USE: 20030129. FIRST USE IN COMMERCE: 20030129
Mark Drawing Code (1) TYPED DRAWING
Design Search Code
Serial Number 75641493

This is owned by an individual, i dont know if that would really matter. So is the word 'dubs' when referring to 'wheels' trademarked over here?

 

[Dave Zan]

The word delta is being used by an airline company, a faucets company, and a
hotel (at the very least). But none are reaching into one another's respective
specific intended usage.

 

[Gerry]

Mark Drawing Code (1) TYPED DRAWING

Again, the logo (artwork), how it is used, is trade marked...the artwork, the logo, the signage, the design, the drawing...NOT THE DICTIONARY WORD "DUBS"...but the art work itself and how it will distinguish them from the three million five hundred and fifty five thousand and one other sites listed on google who use the word "dubs" in conducting the everyday business of advertising, selling, or promoting a service or product on the internet. The one added is you.

 

[abdulla]

Again, thank you very much for your help

 

[Deleted member 5660]

Again, the logo (artwork), how it is used, is trade marked...the artwork, the logo, the signage, the design, the drawing...NOT THE DICTIONARY WORD "DUBS"...but the art work itself and how it will distinguish them from the three million five hundred and fifty five thousand and one other sites listed on google who use the word "dubs" in conducting the everyday business of advertising, selling, or promoting a service or product on the internet. The one added is you.

It is not that simple. A domain name cannot be fanciful, have artwork, designs, etc. However, if the domain name is the same text that is found within the design it may or may not be found to be infringement under the UDRP. It is a complicated issue that has to be taken on a case by case basis.

 

[Gerry]

okay, I give up.

I seem to be wasting a tremendous amount of time on this thread, this forum, and this topic trying to convince someone that I have experience in this area.

 

[Deleted member 5660]

okay, I give up.

I seem to be wasting a tremendous amount of time on this thread, this forum, and this topic trying to convince someone that I have experience in this area.

You cannot just blindly apply old school ideas to domain names. It is a new area and things don't map one-to-one. You cannot just say a business does not have some rights in the text portion of a design mark. If you go through the UDRP decisions you will see decisions go both ways and it depends on the specific facts of the case. The UDRP is somewhat of a kangaroo court which adds a tremendous amount of risk to any trademark situation. If there is a lawsuit filed it could cost tens of thousands of dollars to defend even if the case has no merit. These situations are too complicated to give blanket answers.

 

[Gerry]

You cannot just blindly apply old school ideas to domain names.

"Blindly" is not reading a single word I typed and real life examples I used. If I was blindly going about representing clients and registering domain names for them without the researching done either by myself or our research department, then that is acting blindly.

But, if you want to offer advice and tell this individual what he needs to do and how much money he needs to spend and which forms he needs to file and who he needs to represent him and pay the fees needlessly for someone else to tell him exactly what I have already mentioned, then so be it.

In the meantime, I'll just keep applying my "old school ideas" to my old school clients and their old school websites and businesses. I am sure they would rather I spend my energies and time and advice on steering them in the right direction.:cheers:

 

[Deleted member 5660]

"Blindly" is not reading a single word I typed and real life examples I used. If I was blindly going about representing clients QUOTE]

From what you said some novices on here could think they can ignore all trademarks that are a design mark when registering domain names. All I am saying is that this is not always true and the situations can be very complicated. I read your examples and in many cases such defenses are valid and hold up but in other cases those defenses are disregarded or are not valid.

 

[Onward]

Dubs...

G W Bush?

 

[jberryhill]

Dubs...

G W Bush?

In that context, the proper term is "retread".

 

[SuccessClick]

Let me answer this quickly for you, although I'm surprised that Mr. BerryHill, Esq. didn't give you something more solid. Maybe he needs a retainer. ;-)

My own experience is:

If you think you own a TM, and apply for it, it's not officially recognized until five years of usage uncontested or won when it was contested. I produced a show for four years, and another company came up and used the SAME NAME as my show, but because I waited over 90 days to file suit, the judge said it was too late to protect it because the other company had already started production. The issue was MY name was descriptive and NOT common. If the TM "DUBS" is awarded to this company, then they have to fight for it by filing lawsuits to everyone who uses the name. Good luck. I owned "rentdubs.com" (think i sold it, don't remember). If they sent me a TM letter, I would have just laffed at it.

Obviously, they're not going to fight for it. Why? Because "Dubs" is a generic common word in the english vernacular.

Dubs means a series of things:

1. VW's - slang
2. Wheels (short for W = wheels) plus other manifestations mentioned aboved
3. Dubs is short sometimes for "dibs"
4. The way the TM DubsMagazine wants it is for what? A pointer to their "magazine.com" website? They can't have it just cuz they apply for it.

You CANNOT TRADEMARK COMMON GENERIC TERMS. That I know to be a fact.

I would ignore them until you get an official subpoena.

However, my advice IS NOT LEGAL ADVICE AND NOT INTENDED TO BE. GET A TM ATTY ON THIS TO REVIEW IT IF THEY PURSUE IT WITH LETTERS IN THE MAIL.

Hope this helps.

Sorry, should have done a little more research before i answered, but do a search on "DUBS" in the wikipedia.

With just the listings in wiki, they'll never get the TM. I'll bet a $1000 domain on it.

Not talking about design artwork, just the word DUBS.