Wi-Fi TM

[DomainOgre]

I just snapped up wifigear.com a couple of days ago and I had it appraised at different forum yesterday. This morning, a guy tells me that the Wi-Fi alliance has trademarked Wi-Fi and that I have to get permission from to use it and I will have to pay roya;ities if I do.

http://www.wi-fi.org/OpenSection/index.asp

Does the fact that wifigear.com does not have a hyphen help any here?

I was planning on having an affiliate site for wireless networking equipment. Would that violate their trademark?

Until today, I thought wi-fi was a non profit organization and a generic term. Thus, I did a trademark search on "wifi gear" not "wifi" or "wi-fi".

For what its worth, I did not see a trademark for just "wifi" when I looked a few minutes ago.

 

[izopod]

From their site at http://www.wi-fi.com

© 2003 Wi-Fi Alliance | Site Map | Terms of Use
"Wi-Fi®" and the Wi-Fi logo are the registered trademarks of the Wi-Fi Alliance and "Wi-Fi CERTIFIED," "Wi-Fi ZONE," "Wi-Fi Alliance," their respective logos, and "Wi-Fi Protected Access" are the trademarks of the Wi-Fi Alliance.

To me it looks pretty clear that they only have a "trademark" on "Wi-fi"....

Looks like a lot of sites are using "Wifi" to protect themselves from TM infringement:

http://www.wifinetnews.com (although, they use "Wi-fi" in their header)

btw: From T-mobile.com site:

http://www.t-mobile.com/hotspot/support_wifi.htm

>>>>>>What is Wi-Fi?

Wi-Fi, or Wireless Fidelity, is a term that is used generically to refer to any product or service using any type of 802.11 technology. Wi-Fi networks operate in the unlicensed 2.4 and 5 GHz radio bands, with an 11 Mbps (802.11b) or 54 Mbps (802.11a) data rate, respectively.<<<<


I think "Generically refers" says it all.

 

[izopod]

and from Cafe.com: http://www.cafe.com/index.php?d=footer&p=wi-fi

What Is Wi-Fi?

We're glad you asked.

Wi-Fi, or Wireless Fidelity, is a term that is used generically to refer to any product or service using any type of 802.11 wireless networking protocol. Wi-Fi networks operate in the unlicensed 2.4 and 5 GHz radio bands, with an 11 Mbps (802.11b) or 54 Mbps (802.11a or g) data rate, respectively.

Wi-Fi enabled devices (laptops or PDAs) can send and receive data wirelessly from any location equipped with Wi-Fi access. How? Access points, installed within a Wi-Fi location, transmit an RF signal to Wi-Fi enabled devices that are within range of the access point, which is about 300 feet. The speed of the transmission is governed by the speed of the pipeline fed into the access point.

With the Cafe.com wireless Internet service, a customer, once associated with the access point, can connect to the Internet and enjoy near T-1 speeds in comfort.

Wi-Fi is popularly known as 802.11b. Apple

 

[izopod]

Just curious how "Wi-fi" alliance could even TM the term "Wi-fi"... I can see "Wi-Fi Alliance", but not the the shortened version.

 

[DomainOgre]

Thanks for sharing that research.

I hope you are right and I dont see how they can trademark wi-fi either. Isnt a trademark supposed to be used in trade?

I always thought they were a non-profit org. In fact, it even says they are "a nonprofit international association formed in 1999 to certify interoperability of wireless Local Area Network products based on IEEE 802.11 specification" on their web site.

 

[DomainOgre]

What do the legal minds of DNF think about this issue?

Does the Wi-Fi alliance have the right to enforce their trademark (an apparently weak trademark at that given its a nonprofit org and a generic term) of Wi-Fi on any domain with wifi or wi-fi in it?

 

[namedropper]

Originally posted by izopod
To me it looks pretty clear that they only have a "trademark" on "Wi-fi"....

Ah, but all it takes to be in violation of a trademark is to be confusingly similar. In this case it's not only similar, it's dead on the same thing even without the hyphen.

Going by the UDRP checklist, then you have to worry about whether you have a legitimate right to use the name. I think that one is arguable either way, kind of like the split decisions we've seen on whether someone can use a trademark doing business selling the product of that trademark.

 

[DotLeader]

here comes the cybersquatter police....

 

[namedropper]

Hey, DotLeader... this board is all about discussing these things. You know, Legal Issues? If the person is asking about if it's a TM violation or not it's only right that people answer him. If you have a problem with that you should shove off and not make stupid comments.

Next thing you know you'll be complaining that people dare to make appraisals on the appraisal board.

 

[LewR]

If you look at the TM's - WiFi or Wi-Fi are NOT tm - but rather "The WiFi Shop", "WiFi411" - etc.

It is the use of the term wifi WITH another term that has the TM - not the generic root.

You should have no problems with ownership of the name you have, but be careful how you use it so that you do not step on other toes.

 

[actnow]

I still would like to see a comment from one of the TM lawyers on the forum.

 

[DomainOgre]

Originally posted by LewR
If you look at the TM's - WiFi or Wi-Fi are NOT tm - but rather "The WiFi Shop", "WiFi411" - etc.

It is the use of the term wifi WITH another term that has the TM - not the generic root.

You should have no problems with ownership of the name you have, but be careful how you use it so that you do not step on other toes.

According to this, just Wi-Fi is trademarked: http://www.wi-fi.org/OpenSection/index.asp Look at the bottom of the page. In fact, it says it's a registered trademark.

That said, would I be safe using wifigear.com as an affiliate type site for all wireless networking equipment?

 

[GiantDomains]

Originally posted by DomainOgre


According to this, just Wi-Fi is trademarked: http://www.wi-fi.org/OpenSection/index.asp Look at the bottom of the page. In fact, it says it's a registered trademark.

That said, would I be safe using wifigear.com as an affiliate type site for all wireless networking equipment?

Why would you look at their site to see if they are trademarked, lots of companies carry the TM after their name, and are not trademarked. Research the TM, not their site

 

[DomainOgre]

Thats just what was brought to much attention and its easier to show.

I had glanced about it in TESS as well.

However, after a closer look, TESS says Wi-Fi is a certification mark not a trade mark. Now that makes a lot more sense because they are a non-profit org.

Now my question is does this certfication mark for Wi-Fi give them control over what domains use "wifi" or "wi-fi" like wifigear.com?


--------------------------------------------------------------------------------
Word Mark WI-FI
Goods and Services IC A . US A . G & S: Computer hardware and peripherals, namely, wireless local area networking products. FIRST USE: 19990800. FIRST USE IN COMMERCE: 19990915
Mark Drawing Code (1) TYPED DRAWING
Serial Number 75799629
Filing Date September 15, 1999
Filed ITU FILED AS ITU
Published for Opposition August 8, 2000
Registration Number 2525795
Registration Date January 1, 2002
Owner (REGISTRANT) WIRELESS ETHERNET COMPATIBILITY ALLIANCE, INC. CORPORATION CALIFORNIA 6480 Via Del Oro San Jose CALIFORNIA 951191208
Attorney of Record Jason D. Firth
Type of Mark CERTIFICATION MARK
Register PRINCIPAL
Other Data The certification mark, as intended to be used, will certify that goods manufactured by authorized persons comply with interoperability standards.
Live/Dead Indicator LIVE

 

[actnow]

DomainOgre, I hope one of our TM lawyers will comment on your wifi question.

Since, the word "wifi" is becoming part of our everyday vocabulary.

 

[DomainOgre]

Me too. I especially want to hear what the Wi-Fi Alliance just having a certification mark instead of trade mark does for my ability to use wifigear.com.

 

[actnow]

?

 

[Anthony Ng]

Originally posted by GiantDomains
Why would you look at their site to see if they are trademarked, lots of companies carry the TM after their name, and are not trademarked. Research the TM, not their site

Hmm ... my understanding is that almost anybody can use that TM symbol (&#153 and claim common law trademark of a mark (either text or graphic) he or she uses, but it takes a registered trademark to legally use the R symbol (&#174.

If you read more carefully their fine prints at the bottom of that page, you will notice the difference between e.g. "Wi-Fi" and "Wi-Fi CERTIFIED":

"Wi-Fi®" and the Wi-Fi logo are the registered trademarks of the Wi-Fi Alliance and "Wi-Fi CERTIFIED," "Wi-Fi ZONE," "Wi-Fi Alliance," their respective logos, and "Wi-Fi Protected Access" are the trademarks of the Wi-Fi Alliance.

 

[DomainOgre]

Yea, but Wi-Fi is not listed as a registered trade mark in TESS, only a certification mark. Therefore, Wi-Fi is NOT a registered trade mark.

Their website appears to be wrong in this regard.

 

[jberryhill]

"Yea, but Wi-Fi is not listed as a registered trade mark in TESS, only a certification mark. Therefore, Wi-Fi is NOT a registered trade mark."

I am not going to comment on the substance of the original query here, but there are two similar species of things that may be registered with the USPTO that are worth explaining - collective marks and certification marks. They are indeed both varieties of registered marks.

The best example I can think of for a collective mark is "REALTOR". Not every real estate agent is permitted to call itself a REALTOR. A REALTOR is a real estate agent who is a member of the National Association of Realtors, and hence the term REALTOR is permitted by the NAR only to be used by real estate agents who are members of the NAR, and who presumably abide by its standards of quality and conduct. A collective mark is not used, per se, by the owner of the mark, but by those who are permitted by the owner to use it. The owner retains full enforcement rights in the term, but it is used by members of the organization.

The most common example of a certification mark is the Underwriter's Laboratories sticker that you find on electrical equipement. Again, this is a mark that is not used by the owner, but is applied to goods of others who are certified to have met standards established by the mark owner. If you take a look at the label on just about any piece of electronic gadgetry these days, there is usually a collection of various logos which establish that the gadget has met the standards established by the owners of those logos. The owner retains full enforcement rights as if it were the user of the mark.