Trademarking a name

[quincy]

Exactly, justalayman!

The ".com" part of OVERSTOCK.COM cannot be registered on its own. It is unregistrable. However, as part of the trademark itself, the entire trademark that includes the .com can be registered.

This does not mean that everyone else is barred from using .com as part of their domain name. They just cannot use the trademark "OVERSTOCK.COM," or have same domain name.

But that is the case with ALL trademarks that include a generic word, and that is the case with ALL domain names. And if someone has "overstock" in their domain name, it does not necessarily mean that OVERSTOCK.COM can prevent the use. It depends on all sorts of other factors.

The role of the suffix is to identify the location on the internet - nothing more - and everyone can use ".com," even though OVERSTOCK.COM has decided to include .com as part of their trademark. Everyone can use the numbers 1800 and flowers, even though 1800FLOWERS has decided to include these numbers and the generic word flowers as part of their trademark. In fact, every company can use the words "overstock" in their advertising without infringement, and every flower shop can use the numbers 1800 and flowers in their advertising without infringing.

I think you are confusing the trademark with the domain name here, FR, because of the particular examples you have chosen. A domain name is not and cannot be a trademark on its own - one is not the other - but a trademark can be used as part of a domain name (if the domain name has not already been taken by someone else).

 

[quincy]

Okay, I am going to try to take another stab at explaining FlyingRon's example, because he picked an extremely confusing one. Here is my attempt to unconfuse it a bit:

Overstock.com was able to acquire the domain name "www.Overstock.com" as an internet address. Because there can only be one domain name for each internet location, no one else can register this domain name. However, without a business product or service being sold to the public, "www.Overstock.com" is just an internet address and nothing more. There are no trademark rights in that domain name.

In addition, because the word "overstock" is a generic word that anyone and everyone can use, "overstock" alone cannot be registered as a trademark with the USPTO because registration would prevent everyone from using this generic word. Generic words are unregistrable.

Because Overstock had the domain name address "www.Overstock. com" and because they could not register the generic word "Overstock" on its own as a trademark, Overstock added ".com" to their business name. This ".com" addition created a unique and a USPTO-registrable name of "Overstock.com" This registered trademark is used to identify their business/products/services. No one else can use the trademark Overstock.com to identify their own business, goods or services without infringing on Overstock.com trademark rights.

Once Overstock.com had a business, products and/or services used in commerce, their domain name reflected their trademark - even though the domain name itself is not actually their trademarked name. Their trademarked name needs the suffix ".com." The internet address would have to be "www.Overstock.com.com" to have a domain name that uses their trademarked name. The www and the .com (or its equivalent) are a part of all web addresses.

The registration of Overstock.com does not prevent other companies from purchasing a domain name with the word "overstock" in it for their internet address. They can, for example, purchase a "www.flyingron'soverstock.com" with "flyingron'soverstock" as a trademark for their goods or services.

The word overstock is a generic word that can be used by everyone as it is not rights-protectable and the .com is a suffix that can be used by everyone as it is not rights-protectable. Only Overstock.com (together like that) is rights-protectable, because it is a registered trademark.


edit to add: I just re-read this and it is still confusing.

 

[FlyingRon]

Sorry Quincy, your understanding of internet technology is completely off the wall.

www.overstock.com is a DOMAIN NAME. The whole thing, with the .COM, the WWW, and the overstock.
It is not an INTERNET ADDRESS. It is a domain name that can be looked up on a domain server to yield an internet address or other related information.

 

[quincy]

I understand what you are saying, FR - the www.whatever.com is the domain name and this domain name directs you to a spot on the internet. The domain name is what is called the internet address.

But registration of the domain name does not provide the registrant with trademark rights. More is required (like the use of the trademark in commerce identifying products or services).

The www (World Wide Web) is part of a domain name automatically. People don't choose this www.

The part that comes AFTER the www is the unique name you select and register.

The suffix (the .com, the .org, the dot whatever) is the last part of the web address (or domain name, if you prefer).

If you want to trademark FlyingRon.gov, you cannot use the .gov as the last part of your domain name. The use of .gov is restricted. You can potentially register FlyingRon.gov as a trademark, but the suffix would have to be .com (or one of the allowable suffixes).

But that is not the problem.

You are confusing trademark law with a domain name example that does not show what you think it shows.

When you register a trademark, you are not registering a .com or a .edu or a .org with your trademarked name unless it is part of your trademarked name, even if the .com, .edu, or .org is part of the internet address. The Overstock.com is the trademark and it also happens to be the registered domain name, but the .com in the address is NOT part of the registered trademark. See what I bolded in my earlier post. THAT would be a domain name with the Overstock.com trademark in it.

Your example of www.Overstock.com (and there is also Amazon.com and some others) is recognized as a trademark only because people associate this domain name with the company trademark. The domain name functions as a trademark and as a web address. No one else can have that same domain name anyway OR the same trademark.

So, yes, it is possible for a company to have their trademark named after their domain name (or their domain name named after their trademark). But that does NOT make the domain name a trademark unless or until there is a product or service connected with the name.

A domain name on its own has no trademark rights. Which is all that has been said all along.

Geez. I KNOW this is confusing, because you picked a unique and confusing trademark, but I cannot think of any other way to explain this to you.

 

[HawaiiSteve]

Domain Name Bullies!

If what you say about domain names and trademarks is true/valid, then how is it that MANY online companies are able to SUCCESSFULLY not only make people using their basic, very general name term in another domain name, but have the courts uphold this right and not only take the similar domain name away from the "infringer", AND make them PAY huge sums under the Anti Cybersquating law?

Case in point: Even though the term "classmate" and "classmates" is a very basic, common term, the company behind Classmates.com has successfully prosecuted MANY people who have registered names such as: ClassmatePhotos.com/net/whatever, and claim that nobody can use ANY domain name that in ANY way uses their "very recognizable" and trademark, "Classmates"!

 

[quincy]

If what you say about domain names and trademarks is true/valid, then how is it that MANY online companies are able to SUCCESSFULLY not only make people using their basic, very general name term in another domain name, but have the courts uphold this right and not only take the similar domain name away from the "infringer", AND make them PAY huge sums under the Anti Cybersquating law?

Case in point: Even though the term "classmate" and "classmates" is a very basic, common term, the company behind Classmates.com has successfully prosecuted MANY people who have registered names such as: ClassmatePhotos.com/net/whatever, and claim that nobody can use ANY domain name that in ANY way uses their "very recognizable" and trademark, "Classmates"!

Whether a domain name can be wrested away from an owner will depend on many factors, the major one perhaps being consumer confusion caused by dual uses of a name.

Every case is decided on its own set of facts.

 

[justalayman]

If what you say about domain names and trademarks is true/valid, then how is it that MANY online companies are able to SUCCESSFULLY not only make people using their basic, very general name term in another domain name, but have the courts uphold this right and not only take the similar domain name away from the "infringer", AND make them PAY huge sums under the Anti Cybersquating law?

Case in point: Even though the term "classmate" and "classmates" is a very basic, common term, the company behind Classmates.com has successfully prosecuted MANY people who have registered names such as: ClassmatePhotos.com/net/whatever, and claim that nobody can use ANY domain name that in ANY way uses their "very recognizable" and trademark, "Classmates"!

part of it is because Memory Lane Inc, formerly known as Classmates Online has registered the name classmates.com as a trademark. I suspect there is a classmates.com entity (as opposed to simply a domain name registration) which is likely a wholly owned subsidiary of Memory Lane Inc. Because they have a registration of classmates.com, using classmates[anything].com would cause confusion and as such, give them justification to be able to defend their trademark.

 

[Penn421]

Desperate need of Trademark advice

Hi everyone, I was hoping someone could help me out with this. I had a partner, my cousin, who I shared a trademark with to start our company that we never actually filed for. We had a falling out and now I want to take the 'company' into a new direction by myself. She is holding it over my head that we share the trademark and I need to pay her $100,000 to get total rights to it. However, I noticed she never sent the letter back confirming the trademark, so it will be abandoned in November. I am one of the owners of the trademark, would I be able to reapply for the same trademark without her name on it? So I can do with it what I please? Thank you for the advice.

 

[justalayman]

please start your own thread (and delete your post in this thread).