Question about Tademarks and like names

Discussion in 'Legal Issues' started by hmansfield, Apr 29, 2009.

  1. #1
    *Darn, you know I mean Trademarks, right?*

    I know this question is asked in a more direct fashion all the time, but I need some clarification on how far Trademark extends.

    If a domain and website name, like say "used rides" is trademarked and the guy sells Ford Pintos, does that extend to a name like "used hoopty rides" ? If I sell El Caminos ?

    Does a trademark owner get to claim ownership of everything that is similar or sounds like it, or just the term or phrase that he trademarked ?

    I know you can't take "Yahoo" and register "Yippe Yahoo" and open a search engine, or can you ?
    But can I use "Yippe Yahoo" for a mountain climbing tutorial ?

    What is the rule ?
     
    hmansfield, Apr 29, 2009 IP
  2. Colbyt

    Colbyt Notable Member

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    #2
    It is a matter of "classes". And I can not explain it very well. Automotive things would be in the same class for sure.

    Personal experience here. I have a domain name that is a registered TM of a large company. Their use class is food related and mine is something else. Before I spent much money on the domain I contacted them and they replied that my use class and theirs were not in conflict.

    Another example from personal memory, Dove is a brand name for soap and for snack foods. Again not in the same class.
     
    Colbyt, Apr 29, 2009 IP
  3. mjewel

    mjewel Prominent Member

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    #3
    If a domain and website name, like say "used rides" is trademarked and the guy sells Ford Pintos, does that extend to a name like "used hoopty rides" ? If I sell El Caminos ?

    The classification would likely be the same, so infringement is possible (both automotive related). It would then come down to if the mark is confusingly similar - and that can be a very grey area - and it would be impossible to take an educated guess without knowing the exact name in question. ebay won against perfumebay.

    Does a trademark owner get to claim ownership of everything that is similar or sounds like it, or just the term or phrase that he trademarked ?

    Similar, phonetic, misspelling, and even foreign translations can be infringement. No, it does not have to be exact.

    I know you can't take "Yahoo" and register "Yippe Yahoo" and open a search engine, or can you ?
    But can I use "Yippe Yahoo" for a mountain climbing tutorial ?


    Famous marks have much more broad protection that can extend across classifications. I would say your example would be asking for trouble.

    What is the rule ?


    Always pay for a trademark search and if you still want to proceed, consult an IP attorney. Aggressive mark holders with deep pockets can often win because they will force you out in legal fees. You could easily be required to spend hundreds of thousands (even over a million is possible) in an infringement suit defending your right to keep the mark, and even if you win, courts seldom award attorney fees.
     
    mjewel, Apr 29, 2009 IP
  4. Colbyt

    Colbyt Notable Member

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    #4
    Most of the famous marks are coined words. Realtor, Yahoo, Google. Coined words are dealt with much differently that regular words. Best to avoid them.
     
    Colbyt, Apr 30, 2009 IP
  5. mjewel

    mjewel Prominent Member

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    #5
    I think you might be able to make a claim that your usage is generic (depending on the actual usage - check with an IP attorney), but then again, if the TM holder doesn't like your usage, then they always have the option to sue and force you to spend large sums in a legal defense. It often comes down to if the TM holder "thinks" it is infringement - and that is really hard to judge.

    I would edit your post to remove the reference to the actual domain name. If you use the mark, and it is an issue, they will certainly use your post as evidence you even considered it possible infringement.
     
    mjewel, Apr 30, 2009 IP
  6. hmansfield

    hmansfield Guest

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    #6
    Yep. Good call. I am just going to trust my first instinct and go with the other domain.
     
    hmansfield, Apr 30, 2009 IP