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I got a call from a so called company who asked me to remove some content and transfer my domain name into their account. They said that I am infringing on their trademark.

There are many other companies that make this type of product..... so I don't feel that I am actually infringing. This is an example very close to what the situation is:.

My domain is "running shoes".

Their brand is runners - does this give them authority over my domain name even though they do not own the trademark for "running shoes"?.

Their runners trademark is for running shoes!..

Comments (16)

It's impossible for anyone to say without knowing the specifics, but if they have a reg'd tm and your domain is "confusingly similar" (and from your vague description it sounds like it is) that's not looking good for you. Yeah, but what you "feel" makes no difference - it won't enable you to keep the name or protect you from legal action. If you want to keep the domain, run the details past a lawyer to find out whether or not their claim is valid...

Comment #1

You've got to remove Emotion from your decision, and simply look at facts, especially risk.....

Comment #2

Since most contents or program scripts can be easily cloned on the internet,.

May be needed a little bit self-protecction..

Put the copyright nocice and encoding with Zend or similar encoder will be necessary.

Maybe stay away from trademark domain too. For your reference only...

Comment #3

Thank you! I will take the site down.... wish I would have realized this before I got to it to the first page of google and generating a good amount of traffic......

Comment #4

"running shoes" sounds pretty generic to me. I would speak with a lawyer...

Comment #5

Oh, the OP's just posting an example. Always risky giving actual details.

In an online forum if there's an upcoming legal issue, even though those.

Placed here isn't readily seen on the 'Net...

Comment #6

I disagree with that. It is looking fine for you. I think you have nothing to worry about and you shouldn't take your site down. Keeping your site up and running will protect you more against any claim.

The point is you didn't register that domain thinking of their trademark. You registered it in good faith simply because it is a generic term and you are using it accordingly.

Just make sure there is nothing on your site about their products.

Taking your site down is a bad decision. Put it up again and write a descriptive tagline on what your site is about. If you have no website they will claim you are not using the domain and you only registered it to sell it to the trademark holder or a competitor or to make money from pay per click ads...

Comment #7

I agree you need the advice of a lawyer. It sounds to me you are infringing on their trademark. But without the full facts, we will never know or be able to advise you. Anyhow, the best advice is to talk to a domain lawyer...

Comment #8

They'd have just as much reason to complain about their competitors' products.

I would agree not to take it down though, until you decide on your response. Don't change the tag line yet either - they've already contacted you, they will have screenshots, changing it now is pointless.

Without the facts, all any of us can do is guess and that's about as helpful as flipping a coin. If your site's up and ranked and you want to keep the domain, ask an attorney exactly what you're asking us (with the details, of course.)..

Comment #9

I understand the example, hence the "" around "running shoes".

As explained, and with the example given, I still say it's pretty generic and OP should consult a lawyer to find out for sure...

Comment #10

If you are using the word "runners" on your web page, you're infringing...

Comment #11

I realize that "runners" and "running shoes" is just an example, but as an example, let's look at the TM's on file with USPTO. For example, a search of TESS shows for registered marks with a mark drawing type of "Standard Character Claimed" or "Typed Drawing" (basically a TM of the word/phrase text without regard to font, design, art etc.), shows three registered marks and one dead mark (old).

Here are the categories of the three registered marks:.

1.) IC 033. US 047 049. G & S: distilled spirits. FIRST USE: 20080306. FIRST USE IN COMMERCE: 20080306.

2.) IC 012. US 019 021 023 031 035 044. G & S: Running boards and steps for sport utility vehicles and pickup trucks. FIRST USE: 20000222. FIRST USE IN COMMERCE: 20000222.

3.) IC 030. US 046. G & S: cereal-based snack foods; rice-based snack foods; wheat-based snack foods; corn chips; and fried wheat-based snack foods.

The word "Runners" is very generic, especially in athletics. Since "Typed Drawing" and "Standard Character" are text based (and broader than an artistic/stylized design), then it would be hard to get "Runners" (again example word) as a TM (Typed/Standard) for athletic footwear.

They might have a registered design TM, or claim in common law, but NOT claiming the word/phrase as a TM in an obvious way (e.g., no TM for "Rice" for a brand of "Rice"). I would think that to have any strength at all, it would need to be in an area that excludes running shoes, especially as a broad text-based Mark covering the word/phrase. Again, you would need to compare the real words/phrase situation with the example "Runners" and "Running Shoes".

The interesting part was the part in red. The TM is being claimed in the same category of usage/understanding as the common understanding of the word/phrase. This raises questions on strength of the Mark... I would like to hear from some of the legal minds around here on this one...

Comment #12

This thread is confusing. But helpful to nail down how the notion of "generic" is poorly misunderstood by domainers in general.

1. Is "runners" generic for "running shoes"?.

IMHO, no. I don't anyone who calls a shoe a "runner".

2. Is "runners" descriptive for running shoes?.

Maybe. The thing is - a "runner" is a person or thing which runs. The shoes don't do that. Perhaps the term "runner" is descriptive of someone who might want the shoes, or descriptive of what people become when they put the shoes on, but it would be an interesting argument. Those shoes certainly aren't going to run on their own, you know.

One would better make the argument:.

3. Is "runners" SUGGESTIVE of running shoes?.

This is a more comfortable fit. The shoes don't run, and thus unless there is significant evidence that people call running shoes "runners" (maybe folks do, but I'd look at you funny if you said, "Hey John, put on your runners!).

The battle here is whether one can more convincingly argue that "runners" is descriptive or suggestive, and the outcome is important. To claim trade or service mark rights in a descriptive term, the claimant is going to have to show evidence of "acquired distinctiveness", typically by longstanding substantially exclusive use in connection with that type of goods, such that the relevant consuming public has come to recognize the term as an indicator that goods so marked originate with the claimant (or at least originate with a single source).

When you see an airplane with "American Airlines" on it, you don't say, "Gee, I wonder which American airline that plane belongs to?" You know that, despite the dreadfully descriptive name, those jokers with the silver airplanes have been hauling carcasses on airplanes since the 1930's.

Now, I just did a search and was surprised to find that Kellog's has not managed to establish acquired distinctiveness in "FROSTED FLAKES" apart from "KELLOGG'S FROSTED FLAKES". They are frosted, and they are flakes, and I'd bet that if I sent you out for a box of FROSTED FLAKES, you'd probably come back with Kellogg's. But it turns out that enough OTHER folks must be making frosted flakes that they never quite managed to make the acquired distinctiveness claim.

Kellogg's did better with RICE KRISPIES. Hey, they are rice and they are crispy, and phonetics don't fool anyone. But they've apparently been the only ones doing it since 1928.

Before that I guess you had to settle for Cream of Wheat (1895). Post added at 11:00 PM Previous post was at 10:56 PM (By the way, the guy who used to do the voice of Tony the Tiger for the Frosted Flakes commercials died last year. It was a very moving funeral. There were a few eulogies and then they went outside to put him in a Grrrr-AVE!)..

Comment #13

Thanks John. The confusion is obviously on my end. The point that was interesting was that the product with the TM in the example "Runners", is also the common end-user market of the product (Runners). As domainers, a lot of us are trying to learn by abstraction from the example and apply to our own situations. I was wondering whether attorneys (either side) might use that point raised by the OP, where the Mark appeared to be broad covering both the product (TM) and the end-user group (people) using the product.

Sounds like this association of a word/phrase with both the end-user market and the product itself (TM) might be ripe for abuse. It makes it difficult for web developers, operating in good faith, to write about end-user market names... like "Runners". The reason I brought up the Typed or Standard Character drawing code, is that this could even further complicate the use of the Mark in standard text about an end-user group of people - Runners.

Context is everything in writing, so I suppose in this case it would be important for developers to draw the distinction when writing and developing their sites between an end-user market, and a Mark for a product of the same name, specifically marketed to that end-user market. Just one more thing to worry about...

Comment #14

If there is anything I can't say often enough, it is that trademark disputes tend to be very FACT SPECIFIC, and generalizations are unreliable.

One doesn't have to look far and wide for a lot of examples of this sort of thing. The word "playboy" has a generic meaning apart from the famous magazine. To whom was the magazine traditionally marketed? To the sort of well-off urban single male of the kind you might find living in a penthouse...

Comment #15

Thanks John, and the Playboy example is a great one too (target market phrase/TM product confusion). From the domainers view, we should also be playing defense when developing or otherwise investing. As a defense, about the best we can do (for free) is to read and try to extrapolate/generalize on WIPO decisions, and read forum posts from great attorneys like you and others (thanks again!).

In the OP's case, it mentions that he was contacted for perceived violations of TM rights. It would seem that a (text) TM/SM for a product/service that is also identified with the (even broader) end market could be abused, to the point of complicating natural language like "These socks are great for runners" (TM holder might view this as an unauthorized endorsement). The OP said the dispute was over the domain name "Running Shoes.TLD", while the TM was for "Runners" which was a brand of Running Shoe.

It appears that the TM holder might be trying to take away Category-Name.com (RunningShoes.com, broad, owned by OP), by using his TM as a brand within that broader category, and perhaps abusing the natural language use of an even larger end market "Runners". How is he supposed to talk about Running Shoes (not a disputed TM problem in this story), without talking about "Runners"?.

It just sounds like a shakedown for a good general category domain... but you are right, the FACTS may be quite a bit different. The real situation as printed out with time stamp by the Complainant might look a bit different.

A typical domainer needs to be thinking "Defense" wrt their own domains when they read this... and not just for the obvious TM.com usage where TM is owned by a different company. The OP did not have this problem. The OP's domain name was a broad category phrase containing the TM holder as a brand within the category (along with other brands). The TM was used in the website text/graphics, not the domain name text. It appears that the Complainant now wants the domain, without claiming TM rights for the actual domain name string...

Comment #16


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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