I recently published content to 1widget.com and received a call from the owner of widget.com saying I may be infringing on his name.
The term "widget" is a very popular term for a product that has been around literally for hundreds of years.
Does 1widget.com infringe on widget.com?
And is the owner of widget.com the owner of that trademark?
And is the content of your widget site about widgets?
Can these generic terms be trademarked?
So if the site "stock.com" existed since 1996 and is promoting the purchase of stocks, can I set up the site 1stock.com and also market stocks?
That is what I've done and was told by the owner of stock.com (but not by an attorney yet) that I'm am infringing on his name
There are more black & white cases cases though when it can be considered trademark infringement, and that's when the word has nothing to do with the product. For example if I started selling ant farms and called my company something like "wiggle.com" (and trademarked it). If you set up 1wiggle.com and started selling ant farms too, that would clearly be a trademark violation. If you set up 1wiggle.com and sold magazine subscriptions it wouldn't.
Generic terms or phrases cannot be trademarked...UNLESS it can be shown that they have "acquired distinctiveness," which means that they have either been in use for a long time, or have been promoted in such a way ($$$) that the USPTO accepts them as being trademarkable.
The more generic a mark is, the longer it must be in use to become distinctive, and most never do.
This is called a "2F" filing because that's the section of Trademark Law that covers it.
The main criteria the USPTO uses to accept marks under this section are time in use and dollars spent in promoting the mark in the eyes of the public.
P.S. [M]iller [B]rewing spent $4 million promoting the mark "[L]ite" and got shot down.
The main thing you have to find out is, does the guy actually have a trademark, or is he CLAIMING it as a trademark.
Big difference.
[uspto.gov...]
As far as I can tell there were 600 filings under "widget".
About 100 involved some variation of TLD. None were widget.com
Thanks for the help. I will register 1widget.com today!
Just for protection as I've spent $$$ on backlinking, logo design etc and the extra $400+ to trademark is not consequential to the other costs.
You can get additional information about trademarked terms by running an advanced search at the USPTO [tess2.uspto.gov]. Keep in mind that you should only use the results as guidelines. The final decisions made by the USPTO may differ from what you see in the search reults. Consult with an attorney if you believe the results look encouraging.
Good luck! but just be forewarned...trademarking a domain name is not an easy task.
WIDGET SELLING SYSTEMS.COM
WIDGETNETADVISOR.COM
WIDGETBIZ.COM
WIDGETNET.COM
I noticed in the TARR system details page for the first example WIDGET SELLING SYSTEMS.COM there was a section titled ADDITIONAL INFORMATION with a "Disclaimer:" mentioned for the phrase "SYSTEMS.COM"
Is this because the word SYSTEMS on its own is too generic and therefore SYSTEMS.COM cannot be trademarked and is there parsed off from the full trademark?
The other examples did not have any official Disclaimer section. Perhaps WIDGET.COM may be not distinctive on its own to be trademarked -- however-- I'm hoping 1WIDGET.COM will be distinct enough.
Either way - if WIDGET.COM cannot be trademarked then how could 1WIDGET.COM be infringing on WIDGET.COM?
Perhaps I am in the clear. Nonetheless I paid my $355 yesterday and will report later what happened.
WIDGET SELLING SYSTEMS.COM
WIDGETNETADVISOR.COM
WIDGETBIZ.COM
WIDGETNET.COM
I noticed in the TARR system details page for the first example WIDGET SELLING SYSTEMS.COM there was a section titled ADDITIONAL INFORMATION with a "Disclaimer:" mentioned for the phrase "SYSTEMS.COM"
Is this because the word SYSTEMS on its own is too generic and therefore SYSTEMS.COM cannot be trademarked and is there parsed off from the full trademark?
The other examples did not have any official Disclaimer section. Perhaps WIDGET.COM may be not distinctive on its own to be trademarked -- however-- I'm hoping 1WIDGET.COM will be distinct enough.
Either way - if WIDGET.COM cannot be trademarked then how could 1WIDGET.COM be infringing on WIDGET.COM?
Perhaps I am in the clear. Nonetheless I paid my $355 yesterday and will report later what happened.
Either way - if WIDGET.COM cannot be trademarked then how could 1WIDGET.COM be infringing on WIDGET.COM?
It depends on how the trademark was structured. You can't trademark the word "widget" but you can trademark "widget.com" with the .com being part of the trademark.
That's why you see software and websites that say "Example, Example.com, and the Example logo are registered trademarks of Example, Inc." - because they hold two trademarks, one for the company name and logo, and a second one for the domain name.
Google's challenge of 'Froogles' rejected [printthis.clickability.com]
Two of the three judges on the panel of the Internet Corporation for Assigned Names and Numbers, or ICANN, rejected Google's argument that Froogles.com was "confusingly similar" to Google."The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Google's mark," the panel found. The name Froogles.com "creates an entirely new word and conveys an entirely singular meaning from the mark."
If so, then my only claim to 1widget.com might be that it is distinct. At 1widget.com I am selling the same widget products that are being sold at widget.com. Are I at risk?
You can't TM generic words in the same field that they describe. Rulings have also held that the ".com" ending is just an address identifier that doesn't somehow turn the word into something that prohibits other people from using the same generic word for other sites.
So from my nonprofessional view of things, widget.com guy is clueless or hoping you'll fold for no reason and your trademark attempt may succeed in protecting you a little from frivolous lawsuits but won't stop him from using widgets.com either.
If you already own and use the domain and then someone tries to trademark it, you would be fine as either:
1) You are using it in a different field, one that isn't competing with them.
2) You are using it in the same field, and you have greater rights to it because you were already using it.
If you aren't using it but just holding on to it, it's a little less clearcut, but you are probably still fine. For example, the main dispute resolution guidelines for domains state that in order for a trademark owner to take it away from you, they have to prove three things, one of which is that you registered it in bad faith. If you registered it before their trademark existed, then it couldn't possibly be bad faith, a fact which has been upheld in many decisions already. You can't knowingly infringe upon something that doesn't exist yet. If they go through courts instead of the dispute resolution then a similar argument in your defense could be made.
