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Other >> Domain Name Forum >> Can "PORTAL" or "SITE" be TRADEMARKED?
(Message started by: binaryman on Nov 1st, 2006, 9:37am)

Title: Can "PORTAL" or "SITE" be TRADEMARKED?
Post by binaryman on Nov 1st, 2006, 9:37am
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

Title: Re: Can "PORTAL" or "SITE" be
Post by Dave_Zan on Nov 1st, 2006, 9:13pm
JSonnabend's reply via the link below can also apply to
your question here:

http://www.intelproplaw.com/Forum/Forum.cgi?board=trademark;action=display;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).

Title: Re: Can "PORTAL" or "SITE" be
Post by JSonnabend on Nov 2nd, 2006, 6:42am

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

Title: Re: Can "PORTAL" or "SITE" be
Post by JimIvey on Nov 2nd, 2006, 8:15am
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.

Title: Re: Can "PORTAL" or "SITE" be
Post by JSonnabend on Nov 2nd, 2006, 11:55am

Quote:
(see?  [Steve] Jobs portal)

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

- Jeff

Title: Re: Can "PORTAL" or "SITE" be
Post by JimIvey on Nov 2nd, 2006, 9:35pm

on 11/02/06 at 11:55:21, JSonnabend wrote:
Ah, yes, but then you'd run into a "primarily merely a surname" descriptiveness rejection ;-).  Sad, but I'm not making that up.

I think JOBSPORTAL would survive due to "portal" being a fanciful word to describe the store.  I might have to disclaim "JOBS" for the reason you give, allowing other stores to call themselves things like The Jobs Terminal, The Jobs Hut, All Things Jobs, etc.  At least, that's what I'd argue.

Regards.

Title: Re: Can "PORTAL" or "SITE" be
Post by Dave_Zan on Nov 2nd, 2006, 11:18pm

on 11/02/06 at 08:15:21, JimIvey wrote:
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?


Or when Uzi Nissan registered nissan.com to "promote"
his computer business (and spent lots of dough against
the car company)? ;D



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