Trademarks, TM Classes and Domain Names

[domain_investor]

Here's an issue that I don't understand about trademarks:

When one is given a trademark, it is given in a particular class (or classes). Other's can then get a trademark with the same name in another class as long as it is not likely to cause confusion. For example, company A can get a TM for XYZ in the class of software and Company B can get a trademark for XYZ in the class of boating. No problems.

So, this leads me to the question that relates to domain names. Let's say there is a trademark XYZ in the class of music recordings and the owner of that trademark does not own the domain. I pick it up at a drop auction. Why is it that I cannot use the argument that I will be using that domain name for the purpose of something entirely different than music recordings?

 

[prose]

My understanding is that you can. But....
You run the risk of having to pay to defend that name. (costs money).
You can not use it in bad faith to park it with related keywords to music (lose money).

 

[domain_investor]

So, perhaps the best method is to either not park it, or to create a landing page that describes the intention with the "upcoming" site. At least that way there is some good faith and an indication of future use.

 

[Brett Lewis]

It might be okay, and it might not. It depends really on what type of trademark it is, whether is arbitrary, fanciful or merely descriptive, or whether the trademark is famous. There is no easy answer, and no answer at all without knowing what domain name you are proposing to register, although you are better off not creating a record here of what that domain name is.

Best,
Brett E. Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com

 

[stockshark]

It might be okay, and it might not. It depends really on what type of trademark it is, whether is arbitrary, fanciful or merely descriptive, or whether the trademark is famous. There is no easy answer, and no answer at all without knowing what domain name you are proposing to register, although you are better off not creating a record here of what that domain name is.

Best,
Brett E. Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com

Hi, I am having a similar issue to what slobizman is describing, hope you don't mind if I run it by you. Basically I am considering buying a domain that has, literally, 15+ different live trademarks on the name. Although I am not going to reveal the domain, it would be in a class similar to that of astrology signs, or planets, that type of thing. The domain has meaning, but it's is not necessarily descriptive (I don't think it is). For example if you look up trademarks for the word "scorpio", you will see it has many trademarks. Can you elaborate a little on what you mean by arbitrary or fanciful, and which catagory a tradmarked astrological sign would fall under? And I should add that what I plan to use the domain for has nothing to do with the lines of business that all the tradermark holders are in, although I do plan to develop the site. Potentially could all 15 of these trademark holders send me C&D letters and I would have to fight all of them off?

Many thanks, appreciate your comments....

 

[DNQuest.com]

With TMs, it is on a case by case basis. So as Brett said, it is difficult to specifically address an issue without knowing what the domain is. In general, if the TM happens to be an ordinary word, let's say Apple, you are able to use it as a TM in certain cases, but would be infringing on otheres. If you sold computers, or go into the music industry, you will have some trouble, if you actually sold apples, then there would be no issue (unless you are in close proximity of another person using apples to sell apples). Now is the TM is a fanciful word, meaning someone actually made a word up like Xerox, or Google. Then you would have no rights to register a name (that is what a C+D would tell you).

Now, is your domain has 15 TMs in it, yes, all 15 could come after you. They have a right to protect thier TM. They would have to prove you are illegally infringing on thier mark. So usage will go a long way. BTW- How long is this domain anyway??????

As far as the original question, it does not matter if you hand regged a domain or caught it in a drop. By becoming owner of the domain, you are liable for any making sure you do not register TMed names (it is in every TOS of every registrar). So it does not matter why the company does not have thier domain, if you have it, you are infringing upon thier name, then they would have to prove you are doing it illegally.

 

[touchring]

Hi, how about if the domain owner registers a trademark for the domain? Like apple.com, but not in the class of computers or IT?

 

[DNQuest.com]

Hi, how about if the domain owner registers a trademark for the domain? Like apple.com, but not in the class of computers or IT?

A common mistake is that you can register for a TM and you automatically have it. This is not the case. TMs are earned through usage in commerce. You then register your TM as a protected mark (there is future use claims but won't go into that right now). Just becuase you own a domain does not mean it is TMed. Using it in a way where it would not be confused with any other company, goods or services will help, but when you reigster the domain, you have no "rights" to it (as opposed to a TM holder who have established the rights to a domain).

 

[mgstudent]

Now I'm no lawyer, but in the UK you have registered and unregistered trademarks.

Both provide different level of protections.

As an earlier poster mentioned, a trademark is dependent on use in public commerce:

TMs are earned through usage in commerce.

In the UK just using it in commerce gives you 'unregistered trademark' protection, in the class that you're using it (plus even with it unregistered, you can still use the TM symbol next to the word). Rgistering it not only gives stronger protection and a clear (provable) date for when you started using the word/trademark, but it allows you to use the (r) symbol to show that it is registered as a trademark.

Either way though registered or not, you can still be infringing on someone's trademark. Visa-versa, if you have a un/registered trademark others can still be infringing on yours.

There is much benefit to a trademark being registered.

But back to the initial post, I think* classes are a very important part of trademarks. So if you have XYZ and want to use it to sell cars for example, then XYZ music might have a hard time proving that you are infringing.

However, if you want to use a domain 'XYZMUSIC.COM' to sell cars, then this seems a bit too far fetched because the domain itself seems to inherently carry the trademark class. So XYZ in the music biz would probably have a problem with that.

With the example of scorpio, apple, red, donkey, iggywiggy, or similar, it seems that if you are using these words as your own trademark in a class that none of the other companies have activity then it does seem ok. (again I'm not a lawyer).

(NOTE: The other companies should not have activity in the same classes under their registered trademark. But you must also be careful not to infringe their unregistered trademark protection in classes outside those that they are registered - eg/ classes which they have activity but have not got their trademark registered in that class - because they would still have unregistered trademark protection)


Good luck. I only know this from registering a UK trademark, things might be very different in another country, plus I might have missed stuff with my research. I'm pretty sure that the unregistered trademark / registered trademark exists though ??

 

[DNQuest.com]

It is the same in the US.

"In the UK just using it in commerce gives you 'unregistered trademark' protection, in the class that you're using it (plus even with it unregistered, you can still use the TM symbol next to the word). Rgistering it not only gives stronger protection and a clear (provable) date for when you started using the word/trademark, but it allows you to use the (r) symbol to show that it is registered as a trademark."

Also to remember, commerce is concidered an offering of bona fide goods and/or services.