Generic names

[junglehabitats]

What is the name of your state? Florida

Ok here is the question i have I need advice as to the legalities of the use as a "generic" name such as "kingsnake" .com as to if it can be a trademarked name.Reason i am asking is that the name is a common animal IE: a kingsnake so can this name be trademarked?


I have the name Kingsnakes.com and have the owner of Kingsnake.com file a arbitration claim against me to take over my kingsnakes.com name.I have done a search and discovered the following.

1212.02(i) Section 2(f) Claim with Respect to Incapable Matter
If matter is generic, functional or purely ornamental, or otherwise fails to function as a mark, the matter is unregistrable. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (“If a mark is generic, incapable of serving as a means ‘by which the goods of the applicant may be distinguished from the goods of others’ ... it is not a trademark and can not be registered under the Lanham Act.”); H. Marvin Ginn Corp. v. International Association of Fire Chiefs, 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), and cases cited therein (“A generic term ... can never be registered as a trademark because such a term is ‘merely descriptive’ within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f). The generic name of a thing is in fact the ultimate in descriptiveness.”). See also In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986) (BRAND NAMES FOR LESS, for retail store services in the clothing field, “should remain available for other persons or firms to use to describe the nature of their competitive services.”).

and also this

1215.05 Generic Refusals [R-2]

If a mark is composed of a generic term(s) for the applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks. In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM held generic for providing information regarding financial products and services and electronic commerce services rendered via the Internet, where bonds was the name of one of the financial products offered under the mark); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM held generic for "retail store services and retail services offered via telephone featuring metal shipping containers" and "rental of metal shipping containers").

Example: TURKEY.COM for frozen turkeys is unregistrable on either the Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the Principal or Supplemental Register.

so if anyone can help with the translation of this finding as to whether or not the name kingsnake.com can be trademarked or not .

 

[divgradcurl]

kingsnake.com would be merely descriptive or "generic" if the purpose of the business is to sell kingsnakes; however, if the purpose of the business is, for example, to sell screws, then the term "kingsnake" would be descriptive, not generic, and therefore registerable as a trademark. "Kingsnake kingsnakes" isn't going to fly, but "Kingsnake Screws" probably would.

In any event, a quick search of the USPTO website turned up this:

" Word Mark KINGSNAKE.COM
Goods and Services IC 035. US 100 101 102. G & S: Dissemination of advertising for others via the Internet. FIRST USE: 19970208. FIRST USE IN COMMERCE: 19970208
Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Serial Number 78258091
Filing Date June 4, 2003
Current Filing Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) OnlineHobbyist.com, Inc. CORPORATION 508 East Howard Lane #25 Austin TEXAS 78753
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE "

The USPTO certainly thinks kingsnake.com is trademarkeable...

 

[junglehabitats]

I also found that but

mysearch was through a Trademark center seacrh. here is what i found above & other then what you have shown .

Thank you for your request. Here are the latest results from the TARR web server.

This page was generated by the TARR system on 2003-12-03 13:12:02 ET

Serial Number: 78258091

Registration Number: (NOT AVAILABLE)

words only): KINGSNAKE.COM

Standard Character claim: No

Current Status: Newly filed application, not yet assigned to an examining attorney.

Date of Status: 2003-06-23

Filing Date: 2003-06-04

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Law Office Assigned: LAW OFFICE 111

.

Ok now the site Kingsnake.com is a site as to where the owner gives members & general public a place to sell goods the owner himself doesnt participate in the selling of anything other then a service to people.

Reason i have asked these questions is a very good friend has a "competitive site " in the way that he also has a service in which he allows people to sell / advertise/and has a forum in which when people get screwed over by others in asell to post there problems and name the person/s responsible for them. these two sites have had BAD blood because the owner of kingsnake.com w/out cause decided to ban any mention of the other site in his site aswell as cancelling the other sites PAID ads he was running on his site ( kingsnake.com)The other site was owed a debt of a sizeable amount to him by a friend , this friend owned the domain kingsnakes.com and in turn released it to my friend as form of payment to his debt owed. now as you know by your post the owner of kingsnake .com has owned his name for 6-7 yrs howver he did not protect his domain name buy purchasing the kingsnakes.com domain at the time and only since he saw the other site had ownership of kingsnakes.com and had used it as a redirect to his main site ( which this person has in excess of 80+ domain names that he has done the same thing with to re-direct them to his site ) the owner of kingsnake.com filed a arbitration suit against him .

now in the above information done in my search he didnt file until 6-4-03 from what i am seeing for his mark. so he inturn insued hislitigations w/o having a mark from what i have ( in my meager legal knowledge ) without having a in place copyright of his name kingsnake.com this is backed up by the fact on his site he doesnt have the copyright showed on his site that it is duely noticed as being copyrighted.

 

[divgradcurl]

Your post isn't that easy to understand, but here's a couple of points I got out of it:

"the owner of kingsnake.com w/out cause decided to ban any mention of the other site in his site aswell as cancelling the other sites PAID ads he was running on his site"

This isn't really relevant to the trademark\domain name dispute.

"The other site was owed a debt of a sizeable amount to him by a friend , this friend owned the domain kingsnakes.com and in turn released it to my friend as form of payment to his debt owed."

This makes no sense. Who owns what?

"and had used it as a redirect to his main site ( which this person has in excess of 80+ domain names that he has done the same thing with to re-direct them to his site )"

Irrelevant.

"the owner of kingsnake.com filed a arbitration suit against him"

Which he is allowed to do, of course. Anyone who disputes a domain name can file to arbitrate under ICANN. Doesn't mean he'll win.

"without having a in place copyright of his name kingsnake.com this is backed up by the fact on his site he doesnt have the copyright showed on his site that it is duely noticed as being copyrighted."

This is a trademark issue and has nothing to do with copyright. Just FYI, a copyright notice is NOT required on any works in the U.S. (or just about anywhere else, for that matter).

A couple of comments:

-- It does not appear that a registration has yet been issued on his trademark, so you are right about that.
But he has applied.

-- Even without a registered trademark, if he and the owner of kingsnakes.com are located in the same geographical region, there may be state trademark issues to be concerned with.

It's hard to say who is going to come out on top here. Since we don't know the dates when each person registered their domain names, where eachperson is located, and the history between the two people and domains, it just isn't possible to predict what ICANN will do.

 

[junglehabitats]

ok sorry about the confusion

Ok ill try to re post with a little more clearity to it .


Subject A= Kingsnake.com
Subject B=present owner of Kingsnakes.com
Subject C=Past owner of kingsnakes.com (1998 - 5/5/03)in which Subject B took over the domain name



Subject A's domain is set up to offer a service for selling goods
Subject B's site is a actual seller of CORNSNAKES & KINGSNAKES


Now with respect to the filler information as to why this all came about was that Subject B used the Kingsnakes.com domain as a redirect to his site in which he sold the actual snakes.

Subject A then filed suit with ICANN demanding that Subject B release the domain to him with no compensation to Subject B in return. Subject B Then removed his redirect from kingsnakes.com and placed the domain up for auction. During this time is when the ICANN suit was filed.Subject B had a bid of $7,700.00 placed on that domain name , under ICANN claims/suits a person cannot transfer a domain that is under dispute untill the dispute is settled.

As to geographical locations Subject A is in texas & subject B is in Fla.


Now by the findings on trademark laws it is stated that a "generic" name cannot be trademarked
1212.02(i) Section 2(f) Claim with Respect to Incapable Matter If matter is generic, functional or purely ornamental, or otherwise fails to function as a mark, the matter is unregistrable. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (“If a mark is generic, incapable of serving as a means ‘by which the goods of the applicant may be distinguished from the goods of others’ ... it is not a trademark and can not be registered under the Lanham Act.”); H. Marvin Ginn Corp. v. International Association of Fire Chiefs, 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), and cases cited therein (“A generic term ... can never be registered as a trademark because such a term is ‘merely descriptive’ within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f). The generic name of a thing is in fact the ultimate in descriptiveness.”).

and in the following

1215.05 Generic Refusals [R-2]

If a mark is composed of a generic term(s) for the applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks

Now by these sections it says such names that are "generic" are not markable. With that stated would it be fair to "assume" ( i know assuming is not good) that Subject B could have a leg to Sue Subject A for damages in that his filings with ICANN have caused him damages / loss in the potential sell of kingsnakes.com for $7,700.00 under the rasoning that Subject A does not own a valid mark on the use of Kingsnake.com and by the USTPO sections stated above cannot recieve one due to his name being "generic" in its non descriptive value of his service?

I hope this is a little more understandable in its useage and means .

Thank you for your help in this matter
Respectively
Alan

 

[divgradcurl]

" Now by these sections it says such names that are "generic" are not markable"

No, that's not what it says. What is says is "f a mark is composed of a generic term(s) for the applicant’s goods or services." Unless the owner of kingsnake.com is actually selling snakes or similar items, it would not necessarily be generic. Like I mentioned in my earlier post, if he is selling screws, "kingsnake screws" would NOT be generic, and would be trademarkable.

You are confusing what is meant by "generic." Virtually every word in the english language -- could be considered generic and untrademarkable if you look at things broadly. However, when you apply for a trademark registration, you have to specify a class of products or services you are going to sell, and whether or not the term is generic or not will be determined by comparing the meaning of the term with the product or service the term is going to represent.

For example, "snake.com" would NOT be registerable as a trademark to sell snakes, because it is purely descriptive and generic. "snake.com" probably WOULD be registerable if snake.com was, say, a consulting service (not associated with reptiles in any way!), because in that sense, it is a "fanciful" name designed to inform the user of the source of the service, and not describe the service.

"With that stated would it be fair to "assume" ( i know assuming is not good) that Subject B could have a leg to Sue Subject A for damages in that his filings with ICANN have caused him damages / loss in the potential sell of kingsnakes.com for $7,700.00 under the rasoning that Subject A does not own a valid mark on the use of Kingsnake.com"

Probably not. Although the fact that A does not yet have a trademark registered, he does have an application in, and he has established the use of the name in commerce, which gives him some common-law rights to protect his trademark.

"and by the USTPO sections stated above cannot recieve one due to his name being "generic" in its non descriptive value of his service?"

Again, only if he is in the business of selling snakes would the name be nonregisterable. Even if snakes ARE sold on his website, since the purpose of the website is a service for selling in general, "kingsnake.com" is still a fanciful name for the service, not a descriptive term, and is therefore likely to be registerable.

However, if the service only sells snakes or reptiles, then you might have a case.

Some final thoughts:

1. If your friend wants to keep his domain and keep using it, he should -- ICANN should not strip the domain name if he is using it in his business and is not using it in "bad faith." A person who registers a trademark can not keep others who are already lawfully using the name from using it, but can keep them from expanding their businesses.

2. If this is what really happened, your friend was stupid. As soon as he was notified by domain owner A, he should have continued using the domain name and forced A through arbitration, which, if he was really using the name in goof faith, he would have almost certainly won. However, by auctioning off the domain name, it now appears that he is just trying to make a buck off of the name, and he is much more likely to be found to be using the domain name in "bad faith" which WILL likely result in him losing in arbitration.