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   Could this be a TM issue?
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   Author  Topic: Could this be a TM issue?  (Read 1336 times)
binaryman
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Could this be a TM issue?
« on: Dec 10th, 2006, 11:09am »
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Hi guys,
I am considering registering a domain name. A very close excample of the actual domain I wish to register is NetMobile24.mobi
However the name NetMobile24 is registered under all the generic extensions and most other country extensions. So we have NetMobile24.com, NetMobile24.net, NetMobile24.NL, NetMobile.Co.Uk and so forth. These are all the same company. They have registered  NetMobile24.COM as the Trademark.( Note that the .COM forms part of the trademark. ) It is a figurative mark and shows the letters Net in Blue and Mobile24 in black and the .com part in small red letters underneath as part of the entire design(logo) This logo appears on all their websites. They have not got a TM on NetMobile24 nor has anybody else. (in other words without the .com part there is no TM registration on it)
So my question is will I run the risk of a TM issue here if I register the domain NetMobile24.mobi  Will the absence of the .COM part in my domain make it SAFE for me to register? Or is the name NetMobile24 also protected by the TM even without the .com part of it?
According to what I read out of this following TM article I should be safe or am I reading it wrong?
http://www.mycorporation.com/newsletter/archives/Aug02.htm
 
From what I read out of the following: Quote"If a proposed mark is composed of a merely descriptive term(s) combined with a TLD, the examining attorney should refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. This applies to trademarks, service marks, collective marks and certification marks.
 
If a mark is composed of a generic term(s) for 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. Trademark Act §2(f), 15 U.S.C. §1052(f). "Unquote.
 
According to this the mark should have been rejected for a TM registration in the first place anyway.
I look forward to an answer and thank any of you in advance already.
Regards
Fred.
« Last Edit: Dec 10th, 2006, 12:41pm by binaryman » IP Logged
JSonnabend
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Re: Could this be a TM issue?
« Reply #1 on: Dec 11th, 2006, 7:35am »
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If the mark in question is merely descriptive, the mark should have been refused registration on the principal register absent a showing of secondary meaning.  Assuming the mark was improperly registered on the primary register, you're only course of action regarding the registration (not the underlying trademark rights) is to file a petition to cancel.
 
Many of my new clients come to me with a substantial misunderstanding of mere descriptiveness.  You should make sure you understand that law correctly before reaching any conclusions.
 
The ".com" doesn't form any substantive part of the trademark despite what the registration says.  The registration with the ".com" is effectively the same as one without, and so your statement "in other words without the .com part there is no TM registration on it" is substantively incorrect (although perhaps technically correct).
 
- Jeff
« Last Edit: Dec 11th, 2006, 7:36am by JSonnabend » IP Logged

SonnabendLaw
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binaryman
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Re: Could this be a TM issue?
« Reply #2 on: Dec 13th, 2006, 3:09pm »
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Thanks Jeff Smiley
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