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Trademarks and Existing Domain Names

Postby DannyB » Mon Oct 25, 2010 11:36 am

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I am wondering if I have another trademark problem other than the one in my previous thread, and that is with my product name, (not the name I wanted to use for my company name.) As far as the company name, I am seriously considering another one that I can’t find any conflicts with. My product name is much more important to this business endeavor than the company name anyway. The product name is very “catchy” and descriptive. So far everybody I have run this product name by thinks it is great.

I have found a domain name that is identical to my product name, except my product name doesn’t have “com” on the end of it. The domain name is not in use and is parked somewhere in the Netherlands I think. It smells of cybersquatting anyway.

I want to register this product name as a trademark. Do you think that an examiner would automatically deny my registration based on this parked domain name in a foreign country?

Re: Trademarks and Existing Domain Names

Postby DaveO » Tue Oct 26, 2010 10:29 am

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Examiners do sometimes cite websites or webpages in this manner. The legal standard is whether there is a likelihood of confusion between the marks. But the owner of the website must be actually using the trademark in commerce in the U.S. They can't block your trademark application simply by sitting on the domain name - they have to be actually using the TM in connection with goods or services.

Even if they are actually using it, there may still not be a likelihood of confusion if the goods or services that they are providing are sufficiently different from yours.
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Re: Trademarks and Existing Domain Names

Postby stereo-vision » Tue Oct 26, 2010 2:57 pm

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Dave O, I hope you share your invaluable knowledge with us more often. It's great to have you on here Thank you.
stereo-vision.

Re: Trademarks and Existing Domain Names

Postby DannyB » Tue Oct 26, 2010 4:29 pm

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Dave,

I really appreciate your feedback. I have been running into a few roadblocks lately and your feedback cleared one roadblock out of the way.

I am presently reading a Nolo book called Trademark – Legal Care for Your Business & Product Name by Stephen Alias and Richard Stim. Before starting this book I had no idea how complicated Trademarks are. This has been a great book so far. If there were only one word to describe Trademark law I would say “GRAY” a very very gray area.

The Internet has made it more hazardous than ever to just come up with a name and jump into business. It says in the book that just about everything in the world as far as Trademark names is taken, and now I believe it.

Re: Trademarks and Existing Domain Names

Postby apapage » Wed Oct 27, 2010 7:02 pm

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Dave is correct, if the mark is not used in commerce then there can be no confusion. Also, you are correct regarding TMs being in a gray area. It seems that there is no consistency between two TM cases, which makes it difficult to conduct business in that broad gray zone. The best advice is to stay out of the gray zone and choose marks for your products that are fanciful or arbitrary, and there are absolutely no confusingly similar marks.

Re: Trademarks and Existing Domain Names

Postby JoeWaisman » Wed Oct 27, 2010 7:42 pm

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Of course you could also purchase the domain name. That wouldn't by itself make it perfectly legal. My understanding from above posts is that obtaining the domain and using it in a commercial sense would give you a strong case should trademark issues arise in the future.
___________________________________________
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Re: Trademarks and Existing Domain Names

Postby DannyB » Thu Oct 28, 2010 6:50 pm

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I really don't need that domain name because it is the name of my product and not what I want to call my business. However, just in case you ever want a domain name and it is taken it may be in the hands of an outfit like the one below. I googled a few parts of the contact info, (which it says "All Postal Mails Rejected"). There were numerous links indicating some sort of scam. Does this scream cybersquatting or what?

Registration Service Provided By: ANSWERABLE.COM
Contact: +1.3104837168
Website: http://www.answerable.com

Domain Name XXXXXXXXXXXXXXX

Registrant:
PrivacyProtect.org
Domain Admin
P.O. Box 97
Note - All Postal Mails Rejected, visit Privacyprotect.org
Moergestel
null,5066 ZH
NL
Tel. +45.36946676

Creation Date: 22-Dec-2007
Expiration Date: 22-Dec-2010

Domain servers in listed order:
ns20.domaincontrol.com
ns19.domaincontrol.com

Re: Trademarks and Existing Domain Names

Postby JoeWaisman » Thu Oct 28, 2010 7:59 pm

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PrivacyProtect.org is the "registrant" for the website. Meaning that the owner did not want to reveal their personal info. This makes a ton of sense to me since I've always received a ton of spam for every website I've registered. By itself, using a proxy registrant does not indicate a scam.

Apparently if you want to contact the owner you can do it from this page: http://privacyprotect.org/
___________________________________________
"The horse is here to stay but the automobile is only a novelty, a fad."
Fun links:
*http://www.scribd.com/doc/441708/Bad-Predictions-About-Great-Inventions