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   Can "PORTAL" or "SITE" be TRADEMARKED?
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   Author  Topic: Can "PORTAL" or "SITE" be TRADEMARKED?  (Read 3721 times)
binaryman
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Can "PORTAL" or "SITE" be TRADEMARKED?
« on: Nov 1st, 2006, 9:37am »
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On the internet some words have aquired a meaning of their own, almost, if not generic. Words like PORTAL, WEBSITE,WEBPAGE ect. These words are basicly internet catagories if you like.  You will find them being used  to catagorise or group similar things together. For instance ARTPORTAL or ARTSITE or ARTPAGE or ARTWEB. Or JOBPORTAL,JOBPAGE or JOBSITE. Now recently I have noticed that some of these catagories have been trademarked by certain businesses. Is this allowed? Can I trademark for instance  BOATSITE or BIKEWEB or FOODPORTAL? And if I did does it mean that no-one else is allowed to use those trademarked terms on the internet.  Say I start a company selling boats. So I decide to call it BOATSITE and trademark it as such. Will my application for trademark on BOATSITE be accepted or rejected on the grounds that it is too generic in nature? OK assuming it is accepted and I get the trademark. Then I register BOATSITE.com. I have seen two instances where names ending in "SITE" or "PORTAL" have been trademarked.  On my website I put my TM mark next to my company name. BOATSITE  TM.  After a while I notice that someone else has registered a domain called BOATSITE.net Can I send them a cease and desist and get them to hand over their .net site to me? In fact can I get anyone who registers a domain called boatsite under any of the other extensions such as .info,.org, .us .de ect to hand it over to me? Am I in fact the only entity now who is allowed to use the term BOATSITE on the internet as I have the Trademark and can force anyone else who registers BOATSITE under another extension to hand it over to me. Am I correct in thinking this?
Regards
Thank you
Fred
« Last Edit: Nov 1st, 2006, 10:46am by binaryman » IP Logged
Dave_Zan
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Re: Can "PORTAL" or "SITE" be
« Reply #1 on: Nov 1st, 2006, 9:13pm »
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JSonnabend's reply via the link below can also apply to
your question here:
 
http://www.intelproplaw.com/Forum/Forum.cgi?board=trademark;action=displ ay;num=1160670302
 
Having a trademark is not a magic amulet granting one  
absolute exclusivity for a term. It can and can't be used
against certain domain registrants depending on certain
factors (e.g. how the domain's currently used).
 
I don't have the exact link, but WIPO reminded the Easy
Group they don't have exclusivity over the word "easy"
(or something like that).
« Last Edit: Nov 1st, 2006, 9:14pm by Dave_Zan » IP Logged

Dave Zan
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Re: Can "PORTAL" or "SITE" be
« Reply #2 on: Nov 2nd, 2006, 6:42am »
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Quote:
Having a trademark is not a magic amulet granting one absolute exclusivity for a term.

Exactly correct.  Furthermore, if the term "site" is generic when referring to websites, and "boat" is generic for, well, boats, then having a website about boats called "boatsite" is likely generic as well.  I suppose certain combinations, like "boatweb" might not be generic ("a website about boats" would be the generic term), but it most definitely would be merely descriptive at the outset.
 
Your posts seem to seek hard and fast rules on trademark infringement and rights.  You've asked several times, "if I trademark x, can I stop these other guys?"  That's usually a difficult question to answer, especially in abstract situations such as those you present.
 
Finally, the use of "tm" does not give anyone substantive rights, so "putting a 'tm' next to something" doesn't really mean all that much, at least in the scenarios you've presented.
 
- Jeff
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SonnabendLaw
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JimIvey
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Re: Can "PORTAL" or "SITE" be
« Reply #3 on: Nov 2nd, 2006, 8:15am »
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Everything here is correct.  I'd like to just emphasize something that's perhaps implicit or maybe an underlying assumption that the original poster might not fully grasp.  
 
Trademarks are specific to certain goods/services.  For example, JOBSPORTAL is generic and/or descriptive for a web-portal through which people advertise and/or seek jobs.  However, it might not be generic or descriptive for career counseling services or a store for Apple and/or Pixar merchandise (see?  [Steve] Jobs portal).  I feel pretty confident go so far as to say it's definitely not generic or descriptive when used in conjunction with dental insurance services or something completely unrelated to jobs or a portal of any kind.
 
Of course, that's one of the disconnects between trademark law and domain name registrations.  In trademarks, identical marks on different goods/services can peacefully coexist.  In domain names, there can be only one.
 
So, what do you do when Joseph A. Nike registers nike.com for his dental service?  or Alfred Buick registers buick.com to chart his family tree and share family photos?  or when Winifred J. Microsoftsucks registers a site based on her name?  Of course, these are all made up hypotheticals -- don't go googling for court opinions in these cases.
 
So, to make a better hypothetical, you might want to specify goods/services associated with your marks.  Here, I think it's pretty clear what the original poster intended, but the question "are marks like JOBSPORTAL allowed?" is answered with "Yes." or perhaps "Depends on the goods/services."
 
Regards.
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Re: Can "PORTAL" or "SITE" be
« Reply #4 on: Nov 2nd, 2006, 11:55am »
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Quote:
(see?  [Steve] Jobs portal)

Ah, yes, but then you'd run into a "primarily merely a surname" descriptiveness rejection Wink.  Sad, but I'm not making that up.
 
- Jeff
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