Trademark rights

Generic terms? Can they be trademarked?

[Newby]

I have been approached by a lawyer claiming his client has trademark rights to generic terms that I have in several domains. Since the client had a domain about a year earlier, he claims I purposefully bought my domains to take business from him and that I must give up my domains. I offered to sell them to him but he accuses me of buying the domains only to make a profit, thus making me obviously breaking this law.

Are generic terms such as sales, bargains, bargain, shop, shopping, business, store, clothing, food, electronics, etc. able to be trademarked by someone who has a website, say example.com ----and so if I owned example.net I would be breaking a law?

These domains are not the real ones in question, but good examples. The actual terms in question are among the list that I gave. I would really appreciate feedback on this. I think he is being absurd.

[edited by: Hawkgirl at 8:03 pm (utc) on Dec. 4, 2005]
[edit reason] Example-fied. Specifics removed. [/edit]

[textex]

You can not claim ownership of gerenic terms. Period.

In the industry we work in, the following examples are all owned by different people:

bluewidgets.com
blue-widgets.com
bluewidget.com
blue-widget.com

If people could sue for owning generic terms, the entire internet would be suing eachother.

If he was talking about a trademarked name, not term, you have a different story.

[Webwork]

Their claim, which might not square exactly with trademark, could depend on how you are exploiting the domains for commercial purpose.

Any chance your business/domain practices show a consistent pattern of treading in/on/near other company's trademarks, d/b/a's, etc.?

You playing the traffic game? You attempting to benefit by registering typos of famous trademarks? Could it be inferred from your "other behavior" what your intent is in this case? Does your domain behavior evidence any patterns of conduct?

You see, intent is often inferred and intent may have some important legal consequences.

Sometimes there's more facts that meet the eye to a claim - and it might no do you well to post all the facts in a public forum.

However, since you can't post them without risking grief the value of the opinions is diminished, forgetting for the moment that you're asking webmasters for legal opinions.

If you've got assets at risk I suggest you run the specific issues past legal counsel.

[Newby]

I am absolutely not stepping on any toes other than to own a domain and set up a website which has nothing at all to do with the client's site except for the fact that they both have to do with the same generic terms, which terms are all over the internet.

[edited by: Webwork at 9:49 pm (utc) on Dec. 4, 2005]
[edit reason] Just the facts, not the embellishments [/edit]

[Webwork]

Let's be clear: There are plenty of trademarks, incorporating "generic terms", that are filed with non-exclusionary language. Do a trademark search and you'll find out.

It's not quite as simple as "these are general use words". "Gemeral Motors" is a name that incorporates 2 very general words. "Apple Computer" incorporates 2 very general words. The list of examples could go on and on. You might want to start a website called RedEnvelope.net and start hawking giftware via affiliate programs. Again, "red" and "envelope" are 2 generic terms, but if you tried that rationale for your action I suspect you would hit a wall when facing a "trading off" or infringement claim.

So, what motivated you to register these domains? You might not want to admit it. When you registered the domains did you first examine what was going on on the other domain? Did you take the .net version?

It make be perfectly plausible. I wouldn't lose sleep if I was GiftShop.tld and they were GiftShop.othertld. Ditto PartsCatalog, FashionMagazine, etc. However, if it was AmazonHardcoverBooks? BestBuyElectronics? Who knows?

What is said here is certainly not a defense nor proof of the rightful nature of your claim. There are other issues involved, which is why you should have no peace of mind based upon what you read in a webmaster forum.

[davezan]

My favorite example of a trademarked generic word is "caterpillar". Last I checked the USPTO, there are at least 12 different registrations by 12 different parties. :)

As the others (especially WebWork) have noted, it boils down to why you registered the domain name in the first place.

If your site has any hint of relation with what the trademark holder is doing, then there can be serious legal trouble. Or there is, in this case.

[Newby]

I bought the domain innocently as a complete novice intending to set up an affiliate site and try to earn some extra money. The client has a site with coupons and multiple merchants. My site had one merchant that fit my domain. How is that illegal? I am very frustrated. Thanks for your input tho.