Registering a domain name as a TM

[tulip]

I had this conversation with a website owner about the copyrighting of domain names and he told me that not all domain names can be trademarked. He couldn't explain this well though. My question then is, even if a domain name is available, are there instances where you actually can't copyright a name?

 

[walter]

That's the same thing I have always asked myself over the years. Issues to do with copywriting are very sensitive and require keen attention and detail. I had no idea that there are certain names that you can't copyright, even when not taken?

 

[JackD]

It's my understanding that you cannot TM a generic term. Let's take for example the word Apple. Apple in and of itself is generic and cannot be a TM however the word Apple is a TM when dealing with phones, computers and electronics. You can register a domain name with the word apple in it IF your website deals with fruit or anything other than electronics but you cannot register a domain name with apple in the name then try to sell iPhones.

For domain investors, another good thread is located at
http://www.inforum.in/threads/domain-investors-need-to-learn-some-trademark-law.21357/

 

[tulip]

It's my understanding that you cannot TM a generic term. Let's take for example the word Apple. Apple in and of itself is generic and cannot be a TM however the word Apple is a TM when dealing with phones, computers and electronics. You can register a domain name with the word apple in it IF your website deals with fruit or anything other than electronics but you cannot register a domain name with apple in the name then try to sell iPhones.

This is a great way of looking at it but I wonder if people would pay attention to a website called Apple but that wasn't selling or dealing in phones.I think it is better to go with unique names that haven't been used (anywhere) before.

 

[JackD]

This is a great way of looking at it but I wonder if people would pay attention to a website called Apple but that wasn't selling or dealing in phones.I think it is better to go with unique names that haven't been used (anywhere) before.

I fully agree a unique term would be better. My illustration was just for an example to try to describe what would be acceptable use and what would not be acceptable as far as TM goes.

 

[marsh]

I fully agree a unique term would be better. My illustration was just for an example to try to describe what would be acceptable use and what would not be acceptable as far as TM goes.

I love the illustration, and it is a very good analogy. I think the whole point of trademarked names confuses a lot of people (especially beginners). Choosing a unique name may not be as easy as most people think.

 

[ritchie]

It's my understanding that you cannot TM a generic term. Let's take for example the word Apple. Apple in and of itself is generic and cannot be a TM however the word Apple is a TM when dealing with phones, computers and electronics. You can register a domain name with the word apple in it IF your website deals with fruit or anything other than electronics but you cannot register a domain name with apple in the name then try to sell iPhones.

For domain investors, another good thread is located at
http://www.inforum.in/threads/domain-investors-need-to-learn-some-trademark-law.21357/

This is a good point and I believe it is a good guiding principle when selecting domain names. What are the steps that are involved when purchasing a name that is trademarked/copyrighted? Is there a chance that there'll be a higher cost?

 

[JackD]

The cost will not be higher unless of course there is a UDRP filed against it and you decide to fight. Then you will have cost of lawyers. Before registering a name that you think might be a TM check the name against the WIPO database. If it is in fact a TM there will be number assigned to it that references the type of goods and/or services that are TM. Then if you park the page, make sure no "ads" that reference those classifications show up on the page. If you take these precautions, you should be okay.

WIPO database can be found Here: http://www.wipo.int/branddb/en/