Domain name trademark: net vs .net

[draco]

What is the name of your state (only U.S. law)? Minnesota

About a year ago, I bought a .net domain name. It's a generic term / word, not trademarked. As an example, say food.net (that's not the term / word). I planned to develop it, but got sidetracked with other business. I just found out a company in Florida recently filed a trademark for the name foodnet (again, this is just an example).

Would they be able to try to get my domain based on their new trademark? Could they go after me for trademark infringement for a website on the same topic?

Thank you in advance for any information.

 

[quincy]

What is the name of your state (only U.S. law)? Minnesota

About a year ago, I bought a .net domain name. It's a generic term / word, not trademarked. As an example, say food.net (that's not the term / word). I planned to develop it, but got sidetracked with other business. I just found out a company in Florida recently filed a trademark for the name foodnet (again, this is just an example).

Would they be able to try to get my domain based on their new trademark? Could they go after me for trademark infringement for a website on the same topic?

Thank you in advance for any information.

If there is a company in Florida trying to register a generic name as their trademark, they will probably be disappointed to learn that generic terms are not registrable and receive no protection under trademark law.

A new and unrecognized company would have a hard time wresting your domain from you or going after you for trademark infringement for using generic words, unless or until the generic terms in their trademark, as applied to their product or service, gain a secondary meaning in the marketplace.

The whole purpose of a trademark is to distinguish one product or service from another. You cannot distinguish your doughnut shop from other doughnut shops by calling it Doughnut Shop.

With all of that said, the answer to your questions are "yes." They can try. They may not be successful and, based strictly on what little you have written, probably won't be successful. But it really depends on all facts.

 

[FlyingRon]

Unfortunately domain names are not ruled by any sane rule of law. If they have a trademark (just because you're squatting on food.net doesn't give you any trademark rights to food.net). Once they've established trademark rights, they stand a good chance of getting the domain you are squatting on. You'd have to show some good faith effort that you were using the name rather than squatting on it.

 

[quincy]

Unfortunately domain names are not ruled by any sane rule of law. If they have a trademark (just because you're squatting on food.net doesn't give you any trademark rights to food.net). Once they've established trademark rights, they stand a good chance of getting the domain you are squatting on. You'd have to show some good faith effort that you were using the name rather than squatting on it.

I am not sure how good of a chance the other company would have when the domain names use generic words, FR.

There can be dozens of domain names using the same generic word or words, and trademark rights cannot be asserted because the words themselves cannot be trademarked. Draco's example of "food" is a good one. You have a lot of domain names with food in the name (restaurantfood, healthyfood, food.com, foodnetwork, to name a few) and it is a good bet they are all about food. "Food" is an unregistrable word.*

IF the company develops their company to the extent that, when the word "food" is mentioned, everyone thinks of this one, single company (or its products or services), THEN they may (not likely) have a chance of stopping others from using food in their domain names (but not from using just the word food).

It is not so easy to prevent someone from using a generic word.



*There can be exceptions because there are often exceptions in law. For example, if Lady Gaga decides to name a clothing line "Food" (perhaps marketing beef-based outfits), then the word food could be protected when used in connection with clothing. But when the word food in used in connection with food, the word is not protectable.

 

[FlyingRon]

FOOD is generic, but FOOD NET isn't descriptive at all really, it's fanciful. Just look at things like 1800FLOWERS or even FOOD NETWORK not only have use in commerce but registration on their marks. While the term FLOWERS and FOOD may be descriptive and weak, the coupling with the other components make it fanciful enough.

The issue isn't just the word FOOD. It's the overall mark. It's clear FOODNET or whatever it is in real life can claim trademark if they use it in commerce (and there isn't something else they're infringing on).

The issue then comes to the morass called the IDRP. Domain disputes do NOT follow trademark or corporate naming law. There are other rather less defined terms used. Furhter, the whole thing is run by a bunch of disparate for-profit arbitration bodies. If he had been using FOOD.NET for something in commerce or had a company name or whatever, he could argue good-faith use. The idea that he thought some day he might want to put up a FOOD site, will not be very defensible.

Frankly, this is why when I had a single word domain that I scavenged from when I renamed my company, I set up another LLC to operate an entity under than name to stave off potential IDRP actions.

 

[quincy]

I agree with you that there is a certain amount of insanity when it comes to domain names and the law. Actually, there is a certain amount of insanity in the law, period.

But, I still hold that the suffix of a domain name is not likely to create much trouble for a domain name holder.

The web addresses www.food.net and www.foodnet.net are unlikely to confuse consumers into thinking one is the other. The names selected for the web address are different. The generic term "food" is not the same name as the created name "foodnet."

The top level domains (suffixes like .net, .com, .edu, .gov, and so on) are not considered part of the trademark,* just part of the web address (like the "www" that starts the address). It is when the middle or second level of the domain address, the selected-name part of the address, is a trademarked name, that there could be the potential for an infringement claim on a similar domain name due to consumer confusion, and then there could potentially be a subsequent wresting away of the domain name.

As a note, it is a LOT easier to work with REAL situations and not made-up examples.


(*there may be some odd exceptions)