Confused on TM for site merchandise...

[edrex]

What is the name of your state? CA

I am a member of an online forum called yamahajetboaters.com. Recently a member created a new logo that a lot of people really like so some ordered t-shirts, hats, etc from cafepress. Some got their orders, others got rejected for TM infringement.
The site owner called Yamaha to ask for them to send permission to cafepress for the use of thier name. They said it was ok to use it in the site's name, but they don't allow for anything but official merchandise sold through thier dealers to use thier name.
Since the merchandise does not have Yamaha logo's depicted and clearly says "YamahaJetboaters.com" on it (new logo here: http://yamahajetboaters.com/forum/templates/subSilver/images/logo_phpBB.gif), does Yamaha still retain rights to the word Yamaha? Or, could the site owner trademark the word "yamahajetboaters.com" and then be able to sell merchandise for his website that way?
Thanks for the help,
ed.

 

[Zigner]

Yamaha has obviously drawn the line in the sand...
Does your little social site have enough $ to defend suits that would follow if you use their name in a way the DON'T like?

 

[edrex]

Obviously not, but just because they don't like it does not mean that legally we can't use it that way. So thats why my question is legally if the name of the site was trademarked, would there still be a problem?

 

[divgradcurl]

Obviously not, but just because they don't like it does not mean that legally we can't use it that way. So thats why my question is legally if the name of the site was trademarked, would there still be a problem?

Potentially, yes. Its unlikely that the USPTO would allow trademarking a name that has another's trademarked name embedded in it -- but even if they did, you could still get sued, and, more likely, Yamaha would simply object to the issue of the trademark in the first place, and you would never obtain the federal registration to begin with.

 

[edrex]

Thanks. Thats what I needed to know.

 

[bluewebmedia]

under the radar

In all reality, Yamaha could take the site owner to court and force them to give up the name, since they have a legal Trademark on Yamaha. Right now, I would imagine that the site is under the radar of the legal department at Yamaha, but you could change that, if you start making waves with regards to Trademark rights.