TM question concerning "Word Mark"

[PeterMan]

So if the TM says (words only) then displays the word without .com or anything attached what exactly is TM'd?

It also says:

Word Mark ******* (again, no .com or anything)
Mark Drawing Code (4) STANDARD CHARACTER MARK

and also

Type of Mark SERVICE MARK​

So, if I own a domain with only this word in another extension and it is not used for anything remotely close to what the Goods and Services description of the TM states then is this a "clean" domain?

Thanks!

 

[Deleted member 5660]

Word mark has to do with just characters versus a design or logo. In some cases you may be able to argue that the design that contains words is the trademark rather than the words themselves. If it is a word mark that argument is not available.

The .com generally won't matter because the UDRP says to ignore the extension so if you have example.com and the word mark is "example" then you could have problems and probably need legal advice from a lawyer.

 

[PeterMan]

Word mark has to do with just characters versus a design or logo. In some cases you may be able to argue that the design that contains words is the trademark rather than the words themselves. If it is a word mark that argument is not available.

The .com generally won't matter because the UDRP says to ignore the extension so if you have example.com and the word mark is "example" then you could have problems and probably need legal advice from a lawyer.

ok, thanks I appreciate this response!

Also, the word in question is a dictionary word, so I wonder if that has any bearing on this at all? If I develop a website using the domain in question and my site is based on the actual meaning of the word and has nothing to do with the way that the TM'd word is used is this ok?

 

[Deleted member 5660]

Maybe it is OK, maybe not. Maybe nobody will bother you. Then again maybe you will need to spend $xx,xxx for legal fees to prove you are right in court even if you are right.

 

[domaingenius]

The trademark office ignores the .com bit entirely. So if someone applies for trademark
on thisname.com then they are ruled to be applying for thisname.
If they have a trademark for thisname in class that is say supplying flowers ,and you
use the same word for a domain supply TV's then likely you will be
ok

DG

 

[PeterMan]

Thanks for the help guys...

 

[fab]

Generally speaking, using a generic or descriptive word for use of the actual meaning will not conflict with TM, e.g., using apple.ext for a site about apples, or window.ext for a site about windows. Using them relating to computers would probably create a TM violation.

 

[EnricoSchaefer]

Generally speaking, using a generic or descriptive word for use of the actual meaning will not conflict with TM, e.g., using apple.ext for a site about apples, or window.ext for a site about windows. Using them relating to computers would probably create a TM violation.

Well said. Most dictionary words are used in their non-dictionary sense somewhere somehow. So if you put up a parking page, make sure to exclude trademark protected products and services.

 

[JohnQPublic]

I have a domain in the same situation, listed as a wordmark in TESS database. Does it matter than the domain existed back in 2000 while the first in use on the TM application dates to 2005? I recently got the domain in 2008. I intend on developing the domain completely different from the TM as long as I'm in the clear. The TM relates to music downloads and the music industry. Let me know what you people think. PM me if you are a legal eagle and can help. Thanks.