Web Hosting Talk : Web Hosting Main Forums : Running a Web Hosting Business : domains and trademarks

[carpman]

I have a domain that i wish to use for freeemail, however it has a registered trademark.

can i still use?

[Honu]

Aloha
you have a domain somone else has a trademark for ????
that sounds odd

does there trademark have the fact it is .com and used for the same purpose as yours

you may be able to get your own trademark as teh domain name with .com and use it since you own it if it is not a competing biz
or if it is a common name then you should be OK
I am not a lawyer
what is the url you have ???

[JayC]

Originally posted by Honu
Aloha
you have a domain somone else has a trademark for ????
that sounds odd

Nothing odd about it at all -- there are thousands of cases like it. After all, how many millions of registered marks are there in the world?

You can register it, you can use it. Unless they dispute your right to use it, in which case if they have an existing trademark to match it you might have a hard time winning the arbitration case. But, since you'd be actively using the domain name, your case wouldn't be as hopeless as it would if you were registering someone else's trademarked name just for speculative purposes.

But there are a lot of trademarked terms that the mark owner will never attempt to register, and will never even check for availability of the domain name. So a lot of variables go into how risky it would be for you to use it.

[Honu]

Aloha
well a trademark for say coke a made up name yeah maybe but say a comon name you can not trademark
also you cna trademark the rights to a domain name and if someone has a biz with that name but not trademark the domain name then there is a dif in those two trademarks especially if they are not the same thing
one is say computers the other t-shirt sales
a trademark can be a very hard thing to go against if the other party has enough money but at teh same time it must be distinct and show proof that it would be against tehm
yes I know they are out there but I would not get a domain I know a trademark exists for
just kinda odd
curious what the name is

[Duster]

No one here can give you any valid advice other than consult an attorney familiar with trademarks. Disputes over domain names and trademarks are specific to the names involved and there is no general information that can be given that can give you a yes or no answer.

[Honu]

Aloha
well yes and no
if you read trademark laws there are some very cut and dry issues such as common place names and other things that can not be trademarked

the best thing to do as duster says is consult a PT lawyer
before you even start your biz try to search out your own unique name do a trademark search make sure you are ok
then trademark it
one thing there can be many names with the same trademarks this is very common as the logos or designs are what will make them stand a apart and the industry or trade they are in.
and ask yourself is this name even worth trying to get into dispute over ??

[carpman]

Hello all, the domain in question relates to carp fishing, i plan to use it to offer free email, the comapany that have trademarked it sell carp fishing equipment.

It is generic name.

[Honu]

Aloha
well I would talk to a PT lawyer and get your domain trademarked as a internet service ya should be ok
if it is common then you should not have any probs as long as you do not try to do fishing related but agian check it out
I had a similiar issue where a guy was on my trademark but he sells shirts so I just let it go
My brother is an attorney so I wasn not worried about fees either more of a smacking a brick wall

but good luck with it

[JayC]

Originally posted by Honu
Aloha
well I would talk to a PT lawyer and get your domain trademarked as a internet service ya should be ok
if it is common then you should not have any probs as long as you do not try to do fishing related but agian check it out

Just to clarify: you cannot "trademark" a domain name.

You can register as a trademark a word that is used in a domain name, but carpman's point is that the term he wants to use in a domain name is already a registered mark, held by someone else.

The point about not being the same type of business often comes into play in trademark disputes, but likely would have no bearing in a domain name dispute.

I'd agree that consulting with an attorney is the best avenue to finding a the soundest advice on the matter, but these things are still true: he could register the domain name, and he could use it. If the trademark holder (who well may not be interested in using the term as a domain name) never disputes it, he could use it forever. If they did choose to dispute it, that's when things get complicated, and unpredictable.

[Honu]

Originally posted by JayC
Just to clarify: you cannot "trademark" a domain name.

You can register as a trademark a word that is used in a domain name, but carpman's point is that the term he wants to use in a domain name is already a registered mark, held by someone else.

The point about not being the same type of business often comes into play in trademark disputes, but likely would have no bearing in a domain name dispute.

I'd agree that consulting with an attorney is the best avenue to finding a the soundest advice on the matter, but these things are still true: he could register the domain name, and he could use it. If the trademark holder (who well may not be interested in using the term as a domain name) never disputes it, he could use it forever. If they did choose to dispute it, that's when things get complicated, and unpredictable.

Aloha thanks for clarifying

True you can not register a domain name direct
I guess I meant as a whole with logo and descriptive services including the .com as a mark

I was trying to say register your domain name
say the word he has is "gofish"
well if he registers "gofish" and his logo has "gofish.com" and his descriptive is such that is describes the use for interent email and computer blah blah

that this should be enough of a seperation to the other trademark holder as to avoid confusion.
and the fact he has a common name in use
that is where it gets real sticky the fact he has a common name should not be to tough for him to use it ??

What do you think JayC ??

(just trying to clarify just so ya know not trying to argue or anything with ya
also this is good reason a lawyer should be used and not web boards ??


a good read on this is at
http://www.uspto.gov/web/offices/tac...s/guide299.htm

[JayC]

Originally posted by Honu
I was trying to say register your domain name
say the word he has is "gofish"
well if he registers "gofish" and his logo has "gofish.com" and his descriptive is such that is describes the use for interent email and computer blah blah

that this should be enough of a seperation to the other trademark holder as to avoid confusion.

Yeah, but my point there is that he can't register "gofish," for example, if someone else already has. It doesn't matter that it's a completely different business, the mark can only be registered once. That separation you mention only comes into play in evaluating similar names. Which I guess is what you're now suggesting. Yes, perhaps he could register "gofish.com," as long as that was the name of his business -- the source of his service, and not just the domain name in use. Which in this case it sounds like it would be.

(just trying to clarify just so ya know not trying to argue or anything with ya

Same here! Thanks for the link; actually the example on that page illustrates what I was trying to say. In the example the domain name could not be registered as a trademark, because the applicant didn't use the domain name as his business name.

Maybe a way to look at it is this: you might give your business the same name as your domain name. Then you can register it, because what you are really registering is the business name, not the domain name.

But there are minefields there, anyway. They give the examples soft.com (for facial tissue) and nationalbookoutlet.com as not registerable because they are descriptive. So, for example, webhost.com might not be registerable even if it were the business name. But soft.com might be if it were the business name of, say, a publishing company -- because then it wouldn't be descriptive! The point is that not every business name is eligible as a trademark, even if the whole domain name issue is excluded.

Yeah... consult an attorney!

[Honu]

Aloha,
yeah guess the first way is what I was leading to
not very good at words on a keyboard better speaker I guess
heheheeh
yeah funny as there are so many things to consider hope this has been a good thread fo others to see the value of legal counsel.

I was told that the trademark and identifier can be a big thing.
if ya get to precise you leave yourself more open to vague ya leave yourself open.

I was told that when movies rerelease the directors cut version adn stuff that it is to keep there trademarks for titles fresh so they are showing current use.

well good discussing with ya Jay

[Dogma]

Question: could I trademark BURST(TM) and then so I would have BURST(TM)(TM) and then sue BURST(TM) for using BURST(TM) and make them use just BURST??

[Honu]

hehehehehehe

yeah ya can try
hehehehe
as long as the bursttm was not busted for using a tm that was only a cm or sm related to the uspto if not your tmtm could be used as a cm but not a collective cm as related to a certification
so the tmtm is only a tmtm if the tm is not just a tm but actual bursttm
hmmmmm come to think of it bust.com is registered 2 times allready
heheheheh
burst search

so do bursttm that would be funny hehehehehe

[BurstNET]

Our trademark is "BurstNET" NOT "burst"

Sean R.
BurstNET