Generic words

[markc53]

As a newbie I wonder how some companies can claim everyday words as their own.
For instance apple, jaguar, lincoln. Everyday words of a fruit, animal and river. Whilst "Apple Computers", "Jaguar Cars" and "Lincoln Autos" are no doubt trademarks the generic words are not. Surely a fruit seller has just as much claim to apple.com (if available) as Apple computers?

Or how about registering a company Apple4sale Inc (or Ltd in the UK) and then the domain apple4sale.com? Would it matter if the company sold apples or was a classified ad site for people selling Apple computers?

I realise in a dispute that the one with the most money to pay the lawyers is going to win but is that right?
Any opinions?

 

[WhoDatDog]

Common Sense usually rules. Of course there are exceptions. Many people shoot themselves in the foot by having links that are obviously there to capitalize on the traffic of another. If someone had apple.com and had computers then one could make a reasonable inference of bad faith. If they had red apples on the site or their last name was Apple then that would be a different story. Most cases fall in between.

I have noticed in many recent decisions that Bad Faith is arrived at without a lot of substantive argument, when the underlying facts are murky at best. The burden may be shifting toward the potential infringer, whereas the "spirit' of the original rule was that the one claiming infringement had to prove Bad Faith at the moment of registration.....they seem to be making that leap a lot without much proof, and then it becomes as easy case to decide after that.

However, I believe that if you truly have good intentions, and the facts back you up, then you will win most "fringe" disputes that come your way.

Remember the McDonald's Coffee case where the old woman won millions after spilling hot coffee on herself and suffering severe burns? People who don't pay attention always cite this case as a ridiculous example of a flawed legal system, when in fact, it was the correct decision. McDonalds had been warned by regulators repeatedly to turn down the temperature on their coffee. They decided that they would make more money if their coffee was the "hottest", and they suffered the consequences for that decision. So, if you truly know all of the facts of these cases, there aren't as many "crazy" decisions as you would think.

I believe that the owner of this forum won a case involving the domain name Elephant.com. Some insurance company in another country tried to claim the name. The name remained with it's righful owner.

 

[carlton]

As a newbie I wonder how some companies can claim everyday words as their own.
For instance apple, jaguar, lincoln. Everyday words of a fruit, animal and river. Whilst "Apple Computers", "Jaguar Cars" and "Lincoln Autos" are no doubt trademarks the generic words are not. Surely a fruit seller has just as much claim to apple.com (if available) as Apple computers?

Or how about registering a company Apple4sale Inc (or Ltd in the UK) and then the domain apple4sale.com? Would it matter if the company sold apples or was a classified ad site for people selling Apple computers?

I realise in a dispute that the one with the most money to pay the lawyers is going to win but is that right?
Any opinions?

These are really good questions you are asking. One is safe regging a name like apple or jaguar as long as one is not marketing a classification of goods/services that could be construed as confusingly similar to the trademark holder's products. So any "apple computer" or "jaguar auto" similarity would be an infringement. However, you could use apple.ws or jaguar.cc to market dissimilar products and services. Additionally, your example of apple4sale.com would be exempt from trademark infringement, generally speaking, if you were selling apples vs. apple computers.

 

[GiantDomains]

Or how about registering a company Apple4sale Inc (or Ltd in the UK) and then the domain apple4sale.com? Would it matter if the company sold apples or was a classified ad site for people selling Apple computers?

There's something called "bad faith". If you register in good faith you have much better chances of winning any UDRP. In other words, if you own apple.com, you better be selling apples, because if you use it as an apple computer affiliate program, in the eyes of the courts, you are taking money that was meant for apple computers.

 

[Dave Zan]

Remember the McDonald's Coffee case where the old woman won millions after spilling hot coffee on herself and suffering severe burns? People who don't pay attention always cite this case as a ridiculous example of a flawed legal system, when in fact, it was the correct decision. McDonalds had been warned by regulators repeatedly to turn down the temperature on their coffee. They decided that they would make more money if their coffee was the "hottest", and they suffered the consequences for that decision. So, if you truly know all of the facts of these cases, there aren't as many "crazy" decisions as you would think.

Ah yes, the infamous "Stella Awards". :-D

Incidentally in another forum I frequently visit, someone keeps saying it's so
"darn illegal" to register a trademark for generic names like apple, book, etc. I
really wonder what he meant by that...

 

[jberryhill]

Surely a fruit seller has just as much claim to apple.com (if available) as Apple computers?

Your problem is that you seem to believe that a trademark confers a monopoly in the word. It doesn't. If you want to sell shells, you can set up a store and put "Shell" on the sign. If you want to open a gas station, you can't do that, since Shell is a trademarked brand of gasoline.

If you want to make seaside predictions for sailors, then of course you talk about the tide. If you want to make detergent, no you can't call it Tide.

It's not that difficult to understand, and I don't see why people don't "get it", given that so many trademarks are simply arbitrary words applied to different types of goods and services.

 

[ForumDomains]

Your problem is that you seem to believe that a trademark confers a monopoly in the word. It doesn't...

Well, it does! No court of law should allow generic words to be TM-ed. But... money rules... Power is law - plain and simple! Anybody that pretends that law can be a science is just joking...

 

[markc53]

There's something called "bad faith". If you register in good faith you have much better chances of winning any UDRP. In other words, if you own apple.com, you better be selling apples, because if you use it as an apple computer affiliate program, in the eyes of the courts, you are taking money that was meant for apple computers.

I wasn't thinking of an affiliate program. My idea, for instance, for apple4sale.com would be a classified ad site where (private) sellers would advertise their old Apple computers. As Apple Inc doesn't sell second hand systems it would not hurt them financially. If advertising a company's used products is "in bad faith" then virtually every magazine and newspaper would be in trouble.

Your problem is that you seem to believe that a trademark confers a monopoly in the word. It doesn't.

I have to agree with ForumDomains here. Lawyers acting for one of the big three in Detroit definitely believe they have the monopoly on various words and they have the money to win. When I received the court papers I gave in. If I'd known of this forum then maybe I could have found a lawyer to fight it Pro Bono? The large corporations target the little guys that can't afford to defend themselves.

A trademark holder should only be able to pursue infringements of their exact mark. For instance if I TM "computer" then I would only have rights to that word on its own. If others register "computer systems", "computer cases", etc then so be it.

Is it possible for a domain holder to insist that a complainant uses the URDP system instead of the court system?