Trademark infringement for use of plural form of common descriptive term?

What is the name of your state? Florida.

Take, for example, that someone else has a domain name called "hotrod.com*". You have a website yourself (StreetVehicles.com*) that is similar in services offered but not at all similar in appearance, and certainly in no way would be confusing to someone as to which site they are on. Both sites are about automobiles in one form of another, and deal with hotrods as a subset of the total subject matter on the site.

Events develop where you obtain ownership of the domain name "hotrods.com" and use referral linking to point this domain name to your own "StreetVehicles.com". The owner of "hotrod.com" files for a trademark of the domain name and while the application is still pending, files suit against you in federal court for trademark infringement.

Can a generic and descriptive name like "hotrod" be trademarked in such a circumstance? And even if so, would the use of a domain name that is the plural of such a term be considered as infringement?


* These names are ficticious and are only used as examples of an idea.

These names are ficticious and are only used as examples of an idea.

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This answer is ficticious and only used as an example: You will lose the name Hotrods.com. PERIOD!

The real ironic part of the OP is the examples he uses. Hotrod magazine does own hotrod.com and there is a hotrods.com, which has nothing to do with the magazine and according to the owner of the site, he has had absolutely no contact from Hotrod magazine about his URL. The real answer is: It depends on the owner of the non-plural URL. Companies such as Microsoft and Dell will vigorously fight any attempt to use all or part of their names in a URL address.

And to answer the first question, generic names cannot be copyrighted. "Hotrod" cannot be copyrighted, Hotrod Magazine© and/or Hotrod.com© could. And the examples give are copyrighted.

Is there a difference between a copyright and a trademark, in this context? According to the PTSO guidelines, when someone is attempting to trademark a domain name, such as hotrods.com, the ".com" is discarded for the purposes of making a determination. So it is actually "hotrods" that the trademark is being applied for, which as indicated, is a generic and descriptive term in this sort of context.

But what about copyright? Is the plural "hotrods.com" a copyright infringement of "hotrod.com"? And is the term itself even eligible for copyright protections? And if the term "hotrod.com" was presented as a valid and legal trademark, would it have to be so indicated where it is displayed on a webpage?

Thanks.

"Is there a difference between a copyright and a trademark, in this context?"

There is a difference between copyright and trademark in EVERY context!

"According to the PTSO guidelines, when someone is attempting to trademark a domain name, such as hotrods.com, the ".com" is discarded for the purposes of making a determination. "

That is generally, but not universally, true. If the name of your business is XYZ, then you register XYZ as your trademark, not XYZ.com. However, if the name of your business is XYZ.com, then you register the trademark with the .com attached. So, priceline.com is a registered trademark, even though most of the time you don't add the .com when you register.

"So it is actually "hotrods" that the trademark is being applied for, which as indicated, is a generic and descriptive term in this sort of context."

Probably true.

"But what about copyright? Is the plural "hotrods.com" a copyright infringement of "hotrod.com"? And is the term itself even eligible for copyright protections? And if the term "hotrod.com" was presented as a valid and legal trademark, would it have to be so indicated where it is displayed on a webpage?"

Copyright has nothing to do with this discussion. You can't copyright a single word or a title.

Back to your original post:

"Events develop where you obtain ownership of the domain name "hotrods.com" and use referral linking to point this domain name to your own "StreetVehicles.com". The owner of "hotrod.com" files for a trademark of the domain name and while the application is still pending, files suit against you in federal court for trademark infringement.

Can a generic and descriptive name like "hotrod" be trademarked in such a circumstance? And even if so, would the use of a domain name that is the plural of such a term be considered as infringement?"

It all depends. In general, a generic word cannot be trademarked. Purely descriptive terms also cannot be trademarked unless they have attained a "secondary meaning." In any event, the determining factor is whether or not the USPTO allows the registration; if they do, then simply adding as "s" to the end may be infringing.

It all depends. In general, a generic word cannot be trademarked. Purely descriptive terms also cannot be trademarked unless they have attained a "secondary meaning." In any event, the determining factor is whether or not the USPTO allows the registration; if they do, then simply adding as "s" to the end may be infringing.

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So if the owner of "hotrod.com" filed suit against the owner of "hotrods.com" for trademark infringement while the PTSO was still considering the granting of a trademark, would you say that the lawsuit was without merit? Since the trademark had NOT been granted at the time of filing the lawsuit, then wouldn't such a legal action be premature?

"So if the owner of "hotrod.com" filed suit against the owner of "hotrods.com" for trademark infringement while the PTSO was still considering the granting of a trademark, would you say that the lawsuit was without merit? Since the trademark had NOT been granted at the time of filing the lawsuit, then wouldn't such a legal action be premature?"

Hard to say. Just because someone hasn't yet been granted a registered trademark doesn't mean that they don't have a trademark. Common law and state law trademarks are both recognized. A registered trademark gives you the broadest possible protections, but it is possible to attain and enforce a trademark without USPTO registration.

If you are really worried about this, perhaps its time to talk with a local lawyer who can review all of the facts, and not merely hypotheticals.