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Domain-Trademark generic term dilemma
I have a domain for a trademarked generic term
superpower




msg:3805311
 5:42 pm on Dec 11, 2008 (gmt 0)

I am going to be consulting a trademark attorney but I'd be interested to know if anybody has experience or an opinion on this kind of situation:

I'll use the example of "olive oil" as the term, although that is fictitious, but the generic term is as common as that and a two-word term.

This is *not* something like Xerox--this is a generic descriptive term used for hundreds of years. It's so generic it's often used as an industry classification in official documents.

They have:
1. Trademarked "olive oil" for the print/magazine category. (5 years)
2. They have a magazine called "Olive Oil". (10 years).
3. They own OliveOil.com, but do not sell olive oil, only articles from their magazine.
4. They appear to be a fairly small company, not a big conglomerate and I couldn't find any history of litigation.
5. There are a couple other active sites with similar domain names not owned by them (small stores with 1997-style sites or parked domain)

I have:
1. OliveOils.org (remember this is a fictitious example, I don't own that specific domain!)
2. I plan to file a trademark on a name similar to "Olive Oils" but with an additional appended word like "The Olive Oils Group".
3. My site will both sell and review "Olive Oil". It looks 100% completely different from their site and logo.

Does anybody have any personal experience dealing with an issue like this or recommendations so that I can better defend this if/when it becomes an issue?

 

superpower




msg:3805738
 2:51 am on Dec 12, 2008 (gmt 0)

After looking into this a bit more I am feeling better...

Apparently ICANN and the WIPO have dismissed several domain complaints brought by holders of trademarked generic terms.

So there seems to be precedent in favor of generic keyword domain holders, as long as there is not an attempt to confuse visitors on the source of the website or defraud, or just domain squatting.

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