New Term Based on Trademark

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I was talking with a friend today about a product/treatment that has become super-popular in the US. Jokingly, I added an -ing to the end of the term, and it sounded like it could be a commonly used term. In fact, I may have heard it used before, which is why I thought of it in the first place There are close to 5,000 Google hits for the exact word that I thought I just made up. Out of curiosity, I did a Whois search, and the new term is available in the .com.
When it comes to trademarks, I stay as far away as possible from registering non-generic terms or phrases. At what point does a trademark become a common term and acceptable to use? As much as “Googling” someone is a common term, they actively protect their trademark, and I know this factors into trademark law. I am not going to register the name, but am interested in knowing what the legalities are.

1 COMMENT

  1. Unless a US court has ruled (which normally occurs when one company wants to use the product/service name of another) that it’s no longer a protectable term/name (ie aspirin, yellow pages), any commercial use of the term/name–even with prefix/es, suffix/es, and other words “added/around” it–will likely be found to be illegal.
    Not being an IP attorney, this is of course not legal advice.

  2. The $64,000 Question is, “How would you develop the name?”
    If the only way to monetize your name is to develop it along the same lines as the other domain name (without the “ing”), it will be like ringing the dinner bell for their attorney.

  3. Elliot,

    I bet that I know the domain that you’re speaking of. If it is the same domain…I registered it several years ago but let it drop because I was afraid of TM troubles. Is the fourth letter an “o” ?

    ***UPDATED BY ELLIOT***
    :). You are the second person to ask me. I think we are speaking of the same name.

  4. Elliot,
    I’ve created and registered several domains by adding “ing” to the base word. The “ing” suffix shows action. I’ve received several offers for one of these newly coined phrases that pertains to the housing market.

  5. Elliot:

    As you know, TMs identify the source of the goods used in commerce, etc. As Steven said, if you use the domain in an totally unrelatd field, you may have a defensible interest in the mark. Another defense would be to argue that the primary mark holder’s TM is generic based on its use in the marketplace. That is to say, that if the public failed to identify the mark solely with the TM registrant’s goods/services, then there is a high probability that the mark might be viewed as generic as well. This is what happened to aspirins as cited by Steven, and what would happen to Coca-Cola if it was left up to some Southerners who tend to refer to all soft drinks as “a Coke,” LOL.

  6. Well, well… wouldn’t you know it… after a couple people guessed it in private, someone registered it with private Whois registration. If he was trying to hide his ownership from me or from the TM holder, he shouldn’t have listed it in his aftermarket account. If he reads this, he really should try the Apollo Grill or the Brew Works 😉

  7. Hi Elliot. Thanks for your site. It is the best. My stupid question of the day is, if you have a domain name and a year someone files for a trademark on it and gets it, are you in violation of the trademark? I got a nasty letter from the trademark holder. I strongly suspect that they are trying to do through the back door what they failed to do through the front.

    ***UPDATED BY ELLIOT***
    That’s a very good question for attorneys John Berryhill or Brett Lewis. I am not a legal expert by any stretch, but it sounds like you have a reason to be upset.

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