I need some input PLEASEEEEEE !!!

[tas38]

Hello Everybody........

I need some input from others, that know more then me about domains and TM problems. I got iYakk.com and .net for a voip broardband telephone, or teleco domain name. I posted in a voip forum, first reply said you can write your own check. But then the 2nd post said, I could have trade mark problems with http://www.yak.com telco. I did some research on it, but still need so input from others on it. I'm not sure if I'll sell the domains, or build it out untill I do some more research on voip. When I got the domains, I checked iyak.com it it about yak's having nothing to with voip or a telco. But after getting a reply about TM problems, I went to the USA trade mark site and did a search.

I found nothing searching for iyak or iyakk, but yak and yakk has been trade marked. The yakk is about portable hearing stuff pretty safe there, but yak is a telco from CAN and I'm in the USA. There was other trade marks for yak as well, here is my thoughts after more research on this. My domain is iYakk with a I and 2 k's in it, making it different to the point no one should get confuse them at all. Also yak is a commonly used word, with more then just one meaning. Also it could stand for many 3 word names, looking at cases that was done. Every time a person had a 3 letter domain, they said it could be used to commonly.

And would not take the domain off the owner, this should also hold true the other way around. If the trade mark is only a 3 letter one, then it would be to widely used. To say they have a trade mark case, when it happens to be in a domain name. And this one is commonly used, and it's not a big named person and not many even heard of yak telco. But I need others thoughts on this, but I think I should have no trade mark problems with it. Thanks!

The USA trade mark search......

http://tess2.uspto.gov/bin/gate.exe?f=tess&state=5t4qp7.1.1

 

[DNjet]

I think you are safe in my opinion, its generic.

 

[maroulis]

me too - way too generic....

 

[tas38]

Thanks, for your input!!! Tim

 

[Sarcle]

Definition for yak according to answers. Link

Yak:
To talk persistently and meaninglessly; chatter.

Isn't that what everyone does on the phone? Seems like a pretty generic word for talking. I use it, lot's of people say it. I would think your okay. But I'm not a lawyer so take it with a grain of salt.

 

[jberryhill]

Seems like a pretty generic word for talking.

So?

The question is not whether it is generic for talking, or for a large asiatic bovine animal.

The question is whether it is generic for the provision of telco services.

I have never known anyone to say, upon choosing a telco provider, "I'm trying to decide which yak to use", or "Hey, I found out that AT&T has a new long distance plan, so I think I'll make them my yak."

A word is "generic for X" when you practically cannot define X without using the word. I would venture to guess that a lot of people can discuss telco services at length without ever getting near the word "yak".

 

[tas38]

I'm confused now but is this right, a generic term in domain cases is for genral useage. Not just for trade mark problems, as they pointed out in the cases I seen. It only has to show right of usage, by showing it's a generic term with other usages. The cases I seen, they ruled a 3 letter word had to many uses and was to general for that. They also pointed out, it did not mean they could not take the case to the courts. But I would think if they lost a case, they would find it very hard to over come that case in a real court case as well. As any court hearing a trade mark case then, would not likely want to over turn the ruling lightly.

But even in a trade mark case in a real court room, it could be pointed out that yak doesn't bring to mind any real telco for people in general. And that trade marking the term it's self, would have very limited trade mark rights. And anyone making the choice to trade mark it, would have to live with the limits as a general rule. In this case, it would seem to me they would of been able to defend, iYakk much easier. As it is no where as general usage as yak it's self, as iYakk is not even a general term like yak is. I think the reason is this, if they let a 3 letter word win the case. They would have to let, them win on many other cases that had them in. That would indeed stop way to many, domains from being rightfully used because of one 3 letter trade mark.

In my case with the iYakk.com domain, when most people hear the word yak. They do not think of a telco as you pointed out, but would think of people yakking with each other. Makes it a general term in wide usage in the USA, that would give yak very limited trade mark rights. In other words, iYakk.com would not be hurting yak.com at all, by taking their customers to my site and not their. I did checked iYak.com out for trade mark problems, there is none at all with that. As it's closest to my domain, yak did not even come into my mind as a trade mark problem. And I would think, that would be the case for most other people in general. Or am I missing some thing here, as I do admit this is very new stuff to me ?

Thanks! Tim

 

[carlton]

Good post for discussion. I tend to see your name as being in a grey area in which the answer of TM infringement is not clear. I've never heard of Yak and if they are afforded some protection, it might be geographically restricted and within the fairly narrow niche of telecom. Your domain does sound similar and could be construed as confusingly similar in the public arena. I believe you do run some risk of infringement. I would be curious to know who owns yak in the various other extensions and see what they have done with the name.

 

[tas38]

Yak telco is here.....

http://www.yak.com

 

[katherine]

There is also http://www.yac.com/

 

[tas38]

That makes yak and yac that are telco's, it's the first I seen that one from the UK. Tim

 

[jberryhill]

I'm confused now

That's apparent from the word salad that you posted above. I can't make a whole lot of sense out of what you said, but this part begs an answer:

trade marking the term it's self, would have very limited trade mark rights.

That's true... but if it is "limited" to trademark usage in connection with the same or related goods and services in which you intend to trade, then it doesn't really matter does it.

I mean, duh, "CHAMPION" is a brand of spark plug. Champion is also a word that can be used for a lot of other things - and is. But if you are planning on using "CHAMPIONSHIP" for selling your own spark plugs, then you are going to get nailed to a wall - regardless of whether the word "champion" or "championship" could both be used for lots of other things. What matters is that you are both using confusingly similar terms for spark plugs.

Saying that "it's a word that can be rightfully used for other things" is what I like to call the "hypothetical defense". It's hypothetical in the sense that, yes, in some alternative universe where you are doing something that you aren't actually doing, then you wouldn't have to worry about whether they have a trademark. Unfortunately, if someone has rights in "YAK" as a mark for telco services, then no UDRP panel and no court is going to find a dime's worth of difference between that and "IYAKK" used for telco services.

Absolutely, if you use iyakk.com for the memoirs of an asiatic bovine, nobody is going to have a problem with it.

Do you think any of these are "generic":

SOUTHWEST AIRLINES - gee, don't all airlines fly in that direction every now and then?

US AIRWAYS - don't all airplanes follow airways when they are in the US?

INTERNATIONAL BUSINESS MACHINES - does that mean everyone else has to only sell business machines domestically?

UNITED PARCEL SERVICE - I sure don't want my parcel service to be disorganized.

You can wishful think your way into making all sorts of things seem ambiguous

 

[tas38]

Sorry my write is not that good, but you may be right. But if you are, many domains could be taken from their owners then. Like the yac.com site, it would have trade mark problems for sure. And italk.com would as well, and even talk.com as they are all telco's. The real problem that I see is, yak is a common word and should not have been left to be trade marked. From my under standing about trade marks, the case is they should not have even got a trade mark for it. As it is a commonly used word, yak is the same as talk meaning they would all be covered under a trade mark of yak or talk for that matter.

That is one of the reason, commonly used words should not be trade marked. And yak is not only a common word, it's also only a 3 letter one as well. So any word/name with yak in it that is a telco, would have problems with the yak trade mark. Your point about no one using the word/name commonly, for the word/name telecom is correct. But it is used commonly in many of house holds, for people talking/yakking on phones all the time. It is also used for people talking/yakking on cell phones. And also for people just talking/yakking, but mosly for people that talk/yak to much.

A mother will say to her teen, stop yakking and get off that phone already. Your dad is going to be calling, or a father may say stop that yakking please I'm on the phone. Or some may say, yak yak yak that is all you do all the time. So to me and many others it's a very common word, and is commonly used for people yakking on the phone.

I searched for trade marks, on talk and italk as well. And nothing comes up for them, that is most likely because it's a commonly used word. And yak can easliy be proved common as well, as it's in the dictionary it is in there. If you do a search under thesaurus, there other words with the same meaning as yak. It means talk, what it has ......

Main Entry:--------- yak
Part of Speech:----- verb
Definition:----------- talk
Synonyms:----- babble, blather, chat, chatter, clack, confabulate, gab, gossip, jabber, jaw, prate, prattle, run on, tattle, yammer, and yap.

Link to the search http://thesaurus.reference.com/search?q=yak

The dictionary search......

intr.v. yakked, also yacked yak·king, yack·ing yaks, yacks

1) To talk persistently and meaninglessly; chatter.
2) Prolonged, sometimes senseless talk; chatter.

Link to dictionary search..... http://dictionary.reference.com/search?q=yak

The Acronym for yak.... What does yak stand for.....

Yakovlev (Soviet aircraft designer)

Link to the acronym search for yak.... http://www.acronymfinder.com/acronym.aspx?rec={D9553FB3-7B6E-4E87-84B3-35C883A2DD43}

This is why I think it's a commonly used word, and means the same thing as talk. And I could not find any trade marks on talk, these facts are easy to prove with a dictory and thesaurus. And how could they say it's not a common word used, with talking/yakking on the telephone or voip systems. Of course I not sure, but I heard you can not trade mark commonly used words. I could be wrong I admit, as I'm not a lawyer.

I will now go research trade mark laws, on the use of commonly used words. Here is some thing I found, yak is a common;y used word the meaning is the same as talk.

WHAT IS A GENERIC TERM?

A generic term is a word or phrase that is or has come to be the common term associated with or known as a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. For example, “clock” is a generic term for timepieces. Generic designations are not registrable or protectable. A trademark may potentially become generic if it becomes so widely known and used with a particular category of goods or services as to designate the category of goods or services. In such instances, the "mark" will not be registrable and a previous registration for such a "mark" may be subject to cancellation by a third party. Examples of marks that have become generic over time include “escalator,” “linoleum,” “zipper” and “yo-yo.” This loss of trademark status is sometimes referred to as “genericide.” It should be noted that what is generic in one country may not necessarily be generic in another, for example, the designation ASPIRIN is generic in the U.S. but is not in other countries.

Link to the site with the info....... http://www.inta.org/info/faqsD.html#4

 

[jberryhill]

yak is a common;y used word the meaning is the same as talk.

So what? "Yak" does not mean "telephone company services".

What is a "PLAY STATION"... well, gosh, its a place where you play, right? Is it a trademark for a game console? You bet it is.

What is "COCA COLA"... it is a drink made from coca and cola extracts. I guess that's not a trademark either.

I heard you can not trade mark commonly used words.

Have you ever heard of "TIDE" the detergent? "SHELL" the oil company? Are "tide" and "shell" commonly used words? Of course they are.

What you *can't* do is to obtain a trademark in a commonly used word specifically for the meaning of that word. The bottom line remains that "yak" is not a commonly used word meaning "telephone company services".

Now, yes, there is a semantic connection between talking and telephone services. That would render YAK to be what is called a "suggestive" mark. That puts it two notches above "generic", and one notch below "arbitrary", on the scale of trademark strength.

Do you notice how NONE of the synonyms you listed said "long distance services" or "voice over IP services"? That's a pretty strong clue that "yak" is not generic for those things.

In any event, you wanted "input", you got it.

 

[actnow]

Do you think the domain is worth more than the actual registration cost?
($ 7.00)

Then, why spend all of this time and effort trying to defend the domain?

I see that iyahook.com is available. Yahoo was a generic word before some
small company started using it.

I understand that the underlying principles of TM usage is being discussed.
Which, is very beneficial.

It must be quiet in the legal world when we have one of the major domain lawyers
supplying input 3 times over this "yakky" domain.
(I am not being sarcastic. I'm impressed that he spent the time in
explaining the points between generic and branding.)

 

[tas38]

I'm glad he did as well, I'm sure we are all learning from his posts.

And yes I do want real input, and I am getting that for sure. And I thank you for it, I got a better under standing of the real problems. And I'm sure, others got a better under standing about domains and trade marks as well.

I do beleave iYakk could be worth, a good bit for usage with a telco's service.
It's very catchy for the field, and is only 5 letter that make it a winner. With the right logo, and service it could easy be built into a big name.

Is there away to find, a history on domain names ???

If the domain has a history, it may help with it's usage as well.