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Trademark phrase/word for different Usage

by warrior55
6 replies
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Hello Warriors,

Is it possible to use a trademarked word in a context that is
different then already registered for ?

Example here is a fanciful word 'trenz', trademarked for a certain usage as mentioned by USPTO below:

Advertising services, namely promoting the goods and services of others by advertising presentations, and by customer and commercial support, in connection with the trends in the fields of perfumery, cosmetics, toiletries, household products, and food flavorings

Can one use this word in combination with other words for a domain name for different class of usage without conflicting with the Trademark ?

Say a site on general news or a blog on health or tech stuff etc ..

Thanks
#phrase or word #trademark #usage
  • Profile picture of the author TheContentAuthority
    Warrior55,

    I’m no trademark lawyer and if you plan to do this I would consult one. I have had some experience with trademarks and in general, if it is apparent that someone is using a trademarked term in a way that makes it confusing for consumers to tell the difference, that is typically what those laws are made to protect.

    As a best practice, when in doubt and you can’t afford an attorney, don’t infringe on intellectual property rights because it can be very costly to defend yourself should someone want to sue you.

    Best,

    Shawn
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    • Profile picture of the author paulgl
      I'm sure tons of sites, products, etc. use trenz in their
      name. Like trenz.co.nz, Las Vegas Trenz, etc. Probably
      thousands of businesses around the world use trenz.
      Like boyz, friendz, etc. Every city in American must
      have a clothing store or salon with trenz in it. Or
      auto parts, etc.

      And there must be a million websites using trenz in
      the domain.

      Paul
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      If you were disappointed in your results today, lower your standards tomorrow.

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  • Profile picture of the author yukon
    Banned
    I would never use a trademark keyword in a domain name, but making a reference to a trademark keyword isn't a big deal, just don't claim you own the trademark keyword.

    Millions of sites make reference to big names like Apple, Nike, CBS, etc...

    The problem (IMO) is when you start acting like your associated with the trademark keyword/brand, example:


    Bad idea:
    hxxp://iphone-deals.com

    OK idea:
    hxxp://phonedeals.com/iphone/
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    • Profile picture of the author paulgl
      You can trademark Apple, in various ways, but you cannot
      stop someone using the word apple in their product and/or
      business unless you are doing the same thing. It would be
      not be possible to ban the word apple from all products
      and businesses.

      Apple can't even trademark iphone everywhere.

      New Balance has a shoe named Warrior, and this is
      the Warrior Forum.

      Paul
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      If you were disappointed in your results today, lower your standards tomorrow.

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      • Profile picture of the author yukon
        Banned
        Originally Posted by paulgl View Post

        You can trademark Apple, in various ways, but you cannot
        stop someone using the word apple in their product and/or
        business unless you are doing the same thing. It would be
        not be possible to ban the word apple from all products
        and businesses.

        Apple can't even trademark iphone everywhere.

        New Balance has a shoe named Warrior, and this is
        the Warrior Forum.

        Paul
        I'm sure it's mostly the intent of the way the word is used.

        I have no doubts an Apple lawyer can have a domain like cheap-apple-iphones.com removed.

        Now If your domain was cheap-apples.com & talks all about farming, doubtful anyone would care.
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        • Profile picture of the author warrior55
          Thanks Yukon.

          Yeah I thought so.
          But it depends on the TM owner.
          Like, I don't think it will be easy to start a site called Facebook-Books.com or Facebooks.com for selling books like Amazon etc.

          Though the site may be selling books, it won't be easy for site owner to
          not clash with Facebook TM though in different classification!?

          I think it all depends with the TM owner on how aggressive he is pursuing
          the TM.

          I read somewhere that the original Trademark owner can ask the new entrant in different niche to stop by saying that his brand or Trade value is getting diluted by people selling confusing items using such Business or Domain names.
          Something called Trademark dilution.

          Now this thing is possible when the original trademark is very strong and well known such as Facebook, Apple or Sony etc.
          In other cases of less well known TMs, or undeveloped TMs, such sites in different niches(with TM in their names) could possibly get away with..

          As Paulgl mentioned that this particular TM "trenz" is being used widely by many Businesses, so this TM could possibly fall under the category of weak TM popularity.
          I am not sure but this is just a possibility.

          This could happen because the original TM owner has some huge Business in other niches not giving him time to develop this particular one.
          Kind of this TM is not of prime importance to him, which is exactly opposite of Facebook etc.

          I think Facebook could pursue anyone using its name in domain whichever niche it may be..

          So I wonder, whether I am being extra cautious about it ?

          Also most important, does anyone have an idea on how much approximately an Attorney could charge to check if a domain name violates a TM ?

          Thanks for all the replies.



          Originally Posted by yukon View Post

          I'm sure it's mostly the intent of the way the word is used.

          I have no doubts an Apple lawyer can have a domain like cheap-apple-iphones.com removed.

          Now If your domain was cheap-apples.com & talks all about farming, doubtful anyone would care.
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