Does the following TM dilution/infringement?

Discussion in 'Legal Issues' started by ryan_uk, Jan 2, 2013.

  1. #1
    I recently registered a domain and at the time didn't think enough about the name. When selecting it, I chose a word that has come to have a common meaning: anything unusual/unexplained/extraordinary. At the time I just did not even consider - hey, this is the name of a TV show, too!

    The TV show in questions is The X-Files. The domain is WORDxfiles.com and the word/area has nothing to do with UFOs, aliens, ghosts, Mulder and Scully or anything like that. So, in no way is the site going to try to pretend to be the TV show or associated with it.

    An example would be (and it's not my domain, just similar) marketingxfiles dot com. Just imagine this domain is about dispelling the myths and misconceptions of marketing. Is this scenario infringement and/or dilution of TM?
     
    ryan_uk, Jan 2, 2013 IP
  2. cochisetm

    cochisetm Member

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    #2
    I would say you are ok, but I have seen stranger cases of trademark/copyright holders prevailing with even weaker positions. Sorry that my answer is so ambiguous, but I think the fact that your content has nothing to do with the topic of the tv show as well as the age of the show as meaning you would not be deemed a threat even if the trademark holder had grounds, which they very well may not.
     
    cochisetm, Jan 9, 2013 IP
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  3. ryan_uk

    ryan_uk Illustrious Member

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    #3
    Thank you, cochisetm, for taking the time to read my post and give a relevant answer. It's greatly appreciated. If you are ever struggling with PHP, MySQL, Drupal, Wordpress or on-site SEO, just let me know and if I can give you any advice or assistance I'll be more than happy to, mate.

    Your answer makes sense and has helped me come to a decision to go ahead with the site. Thanks again.
     
    ryan_uk, Jan 10, 2013 IP
  4. cochisetm

    cochisetm Member

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    #4
    No worries ryan_uk, and best of luck with the site. A few more links you may want to keep an eye on, although I still am of the opinion you are in no danger:
    http://trademarks.justia.com/854/41/x-files-85441257.html
    http://trademark.markify.com/trademarks/ctm/x+the+x+files/000451260

    And lastly, one link to put your mind at ease:
    http://www.xfiles.gr

    That web site is still live and is based around the same content as the show. Since the trademark holder, 20th Centruy Fox, hasn't gone after that site which uses their exact mark and references the exact same content, then I feel even better about your chance :)
     
    cochisetm, Jan 10, 2013 IP
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  5. YMC

    YMC Well-Known Member

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    #5
    Maybe I'm just a nervous Nelly but I wouldn't do it. How much would it suck if after you built the site into something amazing that 20th Century Fox tried to sue you? Even if you had a solid legal claim to using the name, you would still spend a great deal of money defending your investment.

    I think the definition you used stems from the show. I don't really recall referring to anything unexplained as being part of a x-file until that show aired. While it may have become commonplace in our lexicons to use it that way, I would guess the origins are indeed with the show.

    If nothing else, I wouldn't want to build my own brand upon a definition created by another better-known brand.
     
    YMC, Jan 14, 2013 IP
  6. ryan_uk

    ryan_uk Illustrious Member

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    #6
    I'm not so nervous. :p If it was a site that meant a lot, then yes, I wouldn't bother. If 20th Century Fox said they wanted the domain name, then I'd happily transfer it to them. Ancient X-Files, the way the word gets used these days (in the press as well as every day usage), all the other domains out there with it in... I'm willing to take the risk and use this generification.

    Thank you for your reply.
     
    ryan_uk, Jan 14, 2013 IP
  7. xanth

    xanth Active Member

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    #7
    Two thoughts:
    (1) The law - whether your term will cause a likelihood of confusion in the marketplace as used.
    (2) The reality - whether your mark is so close to a mark holder's registered mark that it will cause you to suffer enough financial pain to make attempts to use the mark not a worthwhile endeavor.
     
    xanth, Jan 25, 2013 IP
  8. ryan_uk

    ryan_uk Illustrious Member

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    #8
    Well, it wouldn't cause confusion as it's a totally different genre to the X-Files, not a TV show, etc. It would be like getting confused between a book and potato and no one in a stable state of mind would.
     
    ryan_uk, Jan 25, 2013 IP
  9. xanth

    xanth Active Member

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    #9
    Trademark is like fair use to some extent - there are no guarantees until a court rules that something is or isn't trademark infringement. There are ways to identify the probability that something is or isn't infringing. You're talking about what "classes" are about. It's fine to have the Acme Gas Station and the Acme Frozen Fish Sticks companies peacefully coexisting. It gets a little questionable when something is a famous trademark that most would only associate with one origin, e.g. the Coca-Cola Gas Station.


    After deciding whether the odds are that it will or probably won't be subject infringement, you can then make a good guess / estimate whether a mark owner will come after you. If it's distant, chances are the mark owner won't bother. No need to waste money on a very weak case against a defendant without deep pockets. Good luck to you.
     
    xanth, Jan 25, 2013 IP
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  10. ryan_uk

    ryan_uk Illustrious Member

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    #10
    I think there's a distant chance due to other existing sites and domains (even one domain which is so definitely similar). This won't be similar and definitely the design won't be.

    Thanks for your insight and time, mate.
     
    ryan_uk, Jan 25, 2013 IP