Be Cautious of "Common" Words That are Trademarks | DomainInvesting.com
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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.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


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Comments (19)

    Acro

    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.

    September 2nd, 2015 at 5:16 pm

    jen

    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.

    September 2nd, 2015 at 5:36 pm

      kunal

      will

      Apple.store

      be a trademark

      In reply to jen | September 4th, 2015 at 2:24 pm

      Elliot Silver

      I am not an attorney (or expert), but I would image you could sell apples (the fruit) and fruit related products. You couldn’t sell anything that is covered in Apple’s (the big company) intellectual property.

      I am not even sure this domain name will be available to buy.

      September 4th, 2015 at 2:26 pm

      kunal

      Well as searched the net i found .store , .shop New TLDs are coming in market

      So if it ( Apple.store ) Gets available , can i buy it as an investment purpose in future.

      In reply to Elliot Silver | September 4th, 2015 at 2:33 pm

      Elliot Silver

      That’s a question better suited for a lawyer.

      In reply to kunal | September 4th, 2015 at 2:34 pm

    Xavier Lemay

    I believe “Viagra” must be in the top 3!

    September 2nd, 2015 at 7:44 pm

    Bill

    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.

    September 2nd, 2015 at 9:15 pm

      Elliot Silver

      You think you can use the word Realtor orOlympics in a domain name without trouble?

      In reply to Bill | September 2nd, 2015 at 9:19 pm

      Jen

      Try using “Realtor” in a domain.

      Realtor is not generic; it is a made-up word coined in 1916 by the Realtor people. And they do defend their mark vigorously.

      The trademark has been challenged three times, the third one still pending (as of April 2015).

      https://en.wikipedia.org/wiki/National_Association_of_Realtors

      In reply to Bill | September 2nd, 2015 at 9:28 pm

    Acro

    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.

    September 2nd, 2015 at 10:05 pm

      Elliot Silver

      Yes, but every time the Olympics come around, I see a spike in related domain name registrations that could get people in trouble.

      In reply to Acro | September 2nd, 2015 at 10:11 pm

      Acro

      That type of use is definitely an issue. Then again, the IOC most likely still owns SexOlympics dot com. 😀

      In reply to Elliot Silver | September 3rd, 2015 at 12:06 am

      Raymond

      We have Trademark Hotel in Kings Cross, Sydney. It closed down because of 1.30am lockout law enforcement to stop late night trading from 1.30am

      In reply to Acro | September 3rd, 2015 at 12:23 am

    Bill

    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.

    September 2nd, 2015 at 10:13 pm

    steve brady

    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.

    September 3rd, 2015 at 1:05 am

    Rich

    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.

    September 4th, 2015 at 3:27 pm

      Elliot Silver

      My opinion is that is a question best suited for a lawyer.

      September 4th, 2015 at 3:30 pm

    steve brady

    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.

    September 4th, 2015 at 7:11 pm

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