Be Cautious of “Common” Words That are Trademarks

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Registering or purchasing a domain name that contains a commonly used word is a bad idea. It can lead to litigation or a UDRP, and it would severely limit a person’s ability to use the domain name.

The io9.com website had an interesting article about common English words that are actually trademarks, and I think it’s something domain investors should read. Some of these words are likely obvious trademarks to some people, but they may come as a surprise to others.

The aforementioned article had 15 common trademarks, but there are many others as well. Some trademarked terms that I frequently see in domain names that are listed for sale or sent to me for sale include the following:

  • Realtor
  • Olympic(s)
  • Yellow Pages (in some countries)
  • Botox
  • Laundromat

Have a look at marketplaces such as Ebay, NameJet and others, and you can see that there are many domain names for sale with those terms as well as many others. Some of them have since expired while some are still registered and being sold. My bet is that many of the owners of these domain names don’t have any idea that their domain names could pose trademark issues, but many of these trademark owners do protect their trademarks aggressively.

There are plenty of people who intentionally buy trademarked domain names. Some of these have traffic and are parked, some are used to sell products or services (likely without permission), some are used for scams and phishing, and others are investments with the hopes of reselling them to other domain buyers or companies. I think the issue of buying trademark domain names that are less commonly known as trademarks is a bigger risk.

If you can’t afford to ask a domain attorney  every time you register a domain name, you should at least consult the USPTO Tess database to see if the term is trademarked. Many companies are willing to take the domain name and not litigate or file a UDRP, but it can be a big hassle dealing with domain names like these.

If you are going to be a domain buyer, it’s a good idea to know about some of the more common trademarked terms that are commonly used.

19 COMMENTS

  1. These aren’t as common as others involving active popular products or brands, for example: iphone, apple, microsoft, windows, etc. Who uses the word laundromat? 😀

    Olympic is a special case, and while for the most part such registrations are from parties squatting upon a famous mark, there are other uses excluded – some grandfathered – from this. Visit Olympic .com for one such surprising example.

  2. Apple is also a generic word that cannot be trademarked for its dictionary meaning.

    It’s only when registrants reg them with tech (and other TM’s) terms that they get into legal hot water.

    In our area, there is a car sales company that goes by Apple Chevrolet, Apple Nissan, etc.

    So Apple, as a TM) is not the exclusive property of Apple Computers.

  3. This article causes confusion and misunderstandings.
    You can purchase any generic/dictionary word as long as the DN is not used in the same way and cause confusion with a mark already registered.

  4. From http://www.inta.org/TrademarkBasics/FactSheets/Pages/ProtectionofOlympicTrademarks.aspx

    The word Olympic may be used, without sanction, to identify a business or goods or services if

    a. Such use is not combined with any of the Olympic trademarks;
    b. It is evident from the circumstances that the word Olympic refers to the naturally occurring mountains or geographical region of the same name, and not to the USOC or to any Olympic activity; and
    c. Such business is operated, or such goods or services are sold and marketed, in the state of Washington, west of the Cascade Mountain range, and marketing outside this area is not substantial.

    Also, any use of the word Olympic commencing before September 21, 1950, may continue. It is important to note that each country in which the Olympics are held may enact specific legislation governing the use of the Olympic trademarks and other Olympic insignia. Expert advice should be sought from local attorneys in the jurisdiction where the Olympic Games are scheduled to be held.

  5. As you said it review the USPTO for U.S and many more that exist in the world and so and you’ll have some information for you to analyze before writing the reply.

  6. Photocopying file wrappers at the PTO was an Olympic Event. A lot of pages out of those patent wrappers were destroyed by contractors working the copiers all day. One file room, 100 copiers, One wrapper per patent, some thicker than two phone books. As the flimsy metal prongs wore out, pages were spilling out the cover. Many patents had been copied so many times the file was falling apart. The copy room had loose pages of prior art all over the floors, in the garbage cans next to each copier, ALL “supposedly” miscopies, as if none of the original pages of the patent weren’t ripped, mangled or didn’t make it back into the file. Contractors paid to photocopy all day don’t care about the integrity of a patent file. It was a zoo. This was 2004, a year before the PTO moved from CrystalCity to Eisenhower Ave in Alexandria. The file room stayed behind in Crystal City and so did the Trademark Office. Patent searchers began using terminals at the new building as more patents were scanned in. Once it went ONLINE, the file room was out of business, the new PTO terminals were unnecessary, and parking at 2900 CrystalDrive South Tower to look up a Trademark word was obsolete. TESS saves everyone a lot of gas today. Prior to TESS, living across the street from the Trademark Office afforded unprecedented access. It was always empty, quiet as a library because nobody could get to the place, and it took less than a minute to get a receipt from the 2nd floor filing window. The Patent & Trademark files are more secure now than 10 years ago when any person could walk into the PTO, pull any Patent and handle it.

  7. I own crockpotology.com and Ive emailed Crock-pot to see if its okay to lauch a recipe blog using this name. The trademarked term is Crock-pot, the term Ive created is a new word without the hyphen, Crockpotology, whats your opinion on this? Im waiting to hear back from Crock-pot, bc I obviously dont want to break any laws or waste time developing a blog that can be taken away from me. Thanks in advance for your opinion/advice.

  8. What happens when you travel long distance to the PTO only to discover the file is NOT in the file room? Usually this means the file was checked out by an Examiner, and is buried in someone’s office at the PTO building. The file room clerk may or may not tell you which Examiner has the file. Examiners work on multiple patent or trademark applications concurrently and may need to borrow many other files with similar claims to the new application. A common complaint at the law firm was “that file has been sitting on the examiners desk for months”. At this point, hiring a Registered Patent Agent or Registered Patent Attorney is necessary. Only they are authorized to stroll the corridors of the PTO and pop their head into each Examiner’s office to see who has the file. Well today with EFS (Patent Electronic Filing System) and TESS (Trademark Electronic Search System) everyone can view the same file ONLINE from anywhere. Paying hundreds of dollars just to hunt down a file is over with. You’ll still need a Registered Patent Agent/Attorney to write a search report, draft an application or amendment following an OA (Office Action), and discuss your claims with a PTO Examiner.

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