DVD trademark question

[contact]

Time-Warner posseses a registered "DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS" type trademark for "DVD".

Assuming that DVD.com gets deleted, can this kind of design trademark be used as a basis against someone else trying to register DVD.com from today on forward?

Or does it have to specifically be a "TYPED DRAWING" type of trademark?


Word Mark DVD
Goods and Services IC 009. US 021 023 026 036 038. G & S: Optical disc players; compact discs containing digital information for display of filmed products. FIRST USE: 19971101. FIRST USE IN COMMERCE: 19970301
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 150504
Serial Number 75545473
Filing Date September 1, 1998
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition September 7, 1999
Registration Number 2295726
Registration Date November 30, 1999
Owner (REGISTRANT) Time Warner Entertainment Company. L.P. American Television and Communications Corporation, a Delaware corporation Capital Cablevision Systems, Inc., a New York corporation Memphis CATV, Inc., a New York corporation People's Cable Corporation, a New York corporation Time Warner Operations Inc., a Delaware corporation Warner Communications Inc., a Delaware corporation Warner Cable Communications Inc., a Delaware corporation LIMITED PARTNERSHIP DELAWARE 75 Rockefeller Plaza New York NEW YORK 10019
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Elise A. Tenen-Aoki
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DVD" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[Dave Zan]

It's one thing being sued for trademark infringement, it's another to be proven
you don't have a legitimate use or didn't use it in bad faith. It boils down to
intent.

But that's if dvd.com does get deleted...which is highly unlikely based on this:

Domain Name: DVD.COM
Registrar: NETWORK SOLUTIONS, LLC.
Whois Server: whois.networksolutions.com
Referral URL: http://www.networksolutions.com
Name Server: NS2.PBI.NET
Name Server: NS1.PBI.NET
Status: REGISTRAR-LOCK
Updated Date: 24-oct-2004
Creation Date: 25-aug-1998
Expiration Date: 24-aug-2010

Unless it gets deleted due to violating and not eventually complying with the
Service Agreement. :-D

 

[contact]

But I want you to assume that DVD.com gets deleted.

Can someone who registers today DVD.com be prevented from using DVD.com in the goods and services of selling DVDs based on Time-Warner's DESIGN trademark? Or does it have to be a TYPED DRAWING type of trademark?

 

[jberryhill]

A major clue is here:

Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DVD" APART FROM THE MARK AS SHOWN

What that disclaimer means is that the USPTO made a determination that, as plain text in connection with those goods and services, "DVD" is not registrable, and they required the application to expressly disclaim that text standing alone as generic.


Hello everyone who is waiting to hear from me. I have just returned from my annual vacation in Maine, and will be back at work in a few hours.

 

[Honan]

A major clue is here:

Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DVD" APART FROM THE MARK AS SHOWN

What that disclaimer means is that the USPTO made a determination that, as plain text in connection with those goods and services, "DVD" is not registrable, and they required the application to expressly disclaim that text standing alone as generic.


Hello everyone who is waiting to hear from me. I have just returned from my annual vacation in Maine, and will be back at work in a few hours.

Welcome back from Maine, John
Hope 2005 is prosperous for you and that you still can get the time to contribute to the forum

 

[contact]

Hi John,

But what about DESIGN vs. TYPED DRAWING? Is a DESIGN tm just as enforceable as a TYPED DRAWING tm with respect to domain names?

It is my understanding that a DESIGN tm is just a trademark for a logo/image and not a name.

 

[contact]

bump

 

[Blue]

Time Warner' s trademark for "dvd" is related to the word along with their specific logo. Dvd is a dictionary word. Just look the example of MP3 through Nameprotect.com (free TM search) you'll get a series of TM registrations referring to different MP3 logos/images, each of them including the following : "Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "MP3" APART FROM THE MARK AS SHOWN ". The design of the word is a trademark.