Hi, this is a legal question but I think that I would probably get a better answer in this forum compared to the legal forum (since it's related to directories). Today I was reading a past article about how the Dallas Cowboys didn't outbid the market for the domain cowboys.com. There were many debates on whether it was wise or not for the Dallas Cowboys not to purchase www.cowboys.com. The number one reason for people who defended the Dallas Cowboys was that they will not lose targeted traffic since the Cowboys.com (if bought by anybody besides the Dallas Cowboys) can't be used for anything related to football. Does this mean that the owner of the Cowboys.com domain can't start a general web directory and have football as one of their category? What about all the reputable general directories that have a generic/dictionary word as part of their name? It seems that almost all generic words have atleast couple of TM registered for that particular word. How come these companies aren't suing the general directory owners if their trademarked service is being listed as a category? Thanks in advance, -DigiP
Well its a legal question totally. Its true that claims can be surely made, but then it totally depends on who is making the claim, on whom is the claim being made, the place(country) the claim is being made, and many other factors. **But again an action could be taken if the site using the tm name is running the same service that of the main tm or if they are trying to attack their business. (**conditions apply) Why speak about general directories? Many blogs, forums, almost 90% sites do share a tm in their site name.
Yes, but most of the time their content is totally unrelated to the other company's TM service. I guessed I'm more curious about web directories because if I list their TM service in my web directory category, wouldn't I be competing with them ( maybe even cause confusion for consumers) if I also share the same TM name ? I recalled reading an article where somebody lost a three or four letter domain to a company, because their parked domain was showing ads for the company's TM products which was related to the domain name. Which got me thinking about general web directories since they are likely to list every possible niche/service. Thanks in advance, -Digip
As someone who has a Law Degree I'm probably more qualified than most here to answer that. The answer is yes many like avivadirectory are infringing on Trademarks. Although in the example I gave the services are so different, Aviva are an insurance Giant and the avivadirectory is a tiny directory. I think the owner of the directory claims his wife's name is Aviva? If that is the case this is often the one loophole that allows you to use the name. I'm trying to marry someone called Google.
So Jamie, wouldn't it be harder to argue trademark infringement when the word is a dictionary word like 'cowboy' vs a made up name like Aviva or Google? Doesn't intent also play a role?
Good point, GOOGLE is a dictionary name, but yes intent has a very large part to play in it which is why IP law is so complicated. Rather than put war and peace down here take a look at This Article. It will help you understand a little more.
I'll be honest, if I owned cowboy.com I could think of a billion better and more profitable things to put on it than a domain name.
What was the intent is really hard to prove especially in this case. cowboy.com - is not breaking any TM rules. WHY? cowboy is a term that can be used for Dallas Cowboy - a football team... a person who was raised in texas ... If the person use it for Dallas Cowboy reference then yes it is infrigement, if the person use it to make a site about a cowboy who rides on bull ... or a blog with adventures of a cowboy then no it is not infrigment. For General Directory issue ... cowboy.com (what type of name is that for a directory?) ... i know i won't submit because sound like those drop name dirs. But i still don't think that having a directory with a sports / football category will be successfully used against you... Those are just my 2 cents. Disclaimer: I am no self-proclaimed expert like (JamieG), I am just a normal person like you and my answers are based on my personal experience in this industry. You should not take these words and consider them the end of the world, but you should consult a professional before taking any actions.
If madmouse can be a directory, why can't cowboy be one? You probably need to look further and correct your definition of dropped names.
Actually Jamie, I knew the answer before I asked. I asked for the benefit of others. I have done a great deal of research on copyrights and trademarks in the past year and while certainly not an expert or a law student, I do know more than the average person.
Naughty naughty, trying to test the skillset huh. Mind you my answer was correct just in case you didn't know.
Hi, I came across another scenerio that maybe you guys can help me understand. What if there was a general web directory that has a generic phrase for a name such as "Useful Directory". I'm pretty sure that without even searching the TM database, that there are a couple of "Useful" TM ( if there isn't, lets just pretend) names. Would the "Useful Directory" be liable for certain categories that is related to the TM "Useful" names? Also, I do realized that alot of the infringing web directories are probably not worth a large company's time, but I just wanted to double check. How terrible would it be if someone somehow miraculously become the next DMOZ, only for it to be all in vain due to TM infringements. Thanks in advance, -Digip
As a rule, a single word can not be trademarked; unless it is a made up brand name like Google, Prozac, or something similar. I know of at least one trademark with "useful", Andrew Lloyd Webber's Record company is called "Really Useful" group/records - both seem to be being used. I would think it would be difficult for them to argue TM infringement unless you were creating a music directory and tried to play off their name. I could be wrong but I suspect you are worrying too much about this. There are most likely very few words in the English language that have not at one time or another been part of a trademarked brand or phrase. IBM (International Business Machines) is a trademark. Do you think that there are no other companies in the world that have one or more of those 3 words in their company/website title?
Hi, I do realized it's very complicated to get a single word trademarked, but there are companies with one word generic TM. The question is not whether or not you are liable in "any" business with a TM word as part of your business name, just the "general web directory" business. You're example of Andrew Lloyd's "Useful" is a good example of what I am trying to question. I'm sure if I use the "Useful Directory" for a technology or health only niche directory, there would be no TM infringement problem. The question is if I had a "general" (not a niche), with a category that is related to a TM product/service mark, would I be liable for TM infringement? As far as me worrying too much, I wouldn't necessary call it worrying since I have yet made any investment. I just want to clarify everything before I start devoting money & time for buying a domain, establishing a site, and hopefully return a profit. I like to know why things work or don't work, so that I can figure out the best possible solutions for accomplishing my goals. Finally, I guessed what I am trying to figure out is if the "general web directory" business is in itself considered a unique line of service/product that can be distinguish from other service/product (such as products, fashion, medicine) , even though those niches might get listed within the directory (it is a general directory afterall). Thanks in advance, -DigiP
Oh, now, I think I am getting the root of your question. You are worried that a particular listing may be for a website that has a URL that contains a trademark (say MySpace), a description that uses a trademark, or their screenshot includes something that might be trademarked by someone else? As well as using a trademarked name intentionally in a category title. Jamie might have to answer on this one as I truly do not know the "real" answer to that. My suspicion is that the worst that would happen as a 3rd party in such a situation is you would be requested to remove any offending listing. No advertising platform, be it a directory, magazine, or even TV commercial could/should? be expected to ensure that every company that they do business with is not infringing on someone else's trademarks. As to having a category with a true trademark (i.e. iPod) I wouldn't think that would be infringement. From a logical point of view why couldn't a directory owner have a category "iPod Sellers"? However, having a niche directory called iPodDirectory would seem to me to be risky as you are truly building your brand upon their trademarked name.
I'll leave you guys discuss this and then when maybe come in as I don't want to be seen as a know it all. FYI, your both wrong on several points but I'm sure you'll enjoy the fun of debate. One thing I must say though is NEVER make a comment on TM until you've consulted the database' info. They hold the key.