Domain versus trademark : avoiding hassle

[gerrit]

While I realise I may be worrying for no reason, I rather avoid any trouble than to solve issues should they appear.

As I stated before in a topic (I think) I am a writer and would like to dedicate part of my site to my artistic project. For the arts project I have a name in mind which is the title of one of my booklets as well.

Obviously I'd like to register the domainname for it, but how can I know that I am not violating any trademark? I mean, artists around the world use pseudonyms, some of those artists only known locally. Maybe some person in a far off country who is only known locally already has the same or similar artistic name. Or there may be a company somewhere far away with the same name...

Now I did some searching: Google indicates (when typing the name I would like to use for my project) only a book and two songs of this name, but no company nor artist using it as name (must add I only checked the first 5 or 6 pages of Google results because every result seemed to lead to those same few songs and book or be random words in an article).

YouTube shows only those two songs of this title, but no band or artist using it as their name.

Wikipedia shows no exact match neither, only some words in a random article.

So it seems to be OK, but what confuses me is this: there are two companies (one in the US and one in Canada, neither of both known internationally) using one part of the name I'd like for my arts project. Example: these two companies are named "Pencil" or "Pencil Delivery" (random example) while I want the name "Broken Pencils" for my arts project (again random example)

Am I not violating any rule by registering that domain? I already looked for trademark and pseudonym databases but there seems to be no such thing existing (only a few local ones but that won't get me far when this says nothing about trademarks used in other countries)

Obviously I have no mala fide intentions, I just have a name in mind that is suitable for my arts project. The name has 3 words of which 1 word is part of two companies' names (but none of both has the exact 3 word combination that I have in mind)

[gerrit]

Re: Domain versus trademark : avoiding hassle

PS: I also was told today that a common word from the dictionary cannot be registered as a trademark, so while for example Hyundai is a trademark one cannot claim a common word such as "pencil" as a trademark unless there is something added such as "pencil Ltd" but according to this person the fact it's a common term from a dictionary would only protect pencilltd.com and would not disallow anyone to register another domain containg the word "pencil"

I am quite confused ...

[Vasili]

Re: Domain versus trademark : avoiding hassle

1. Once you complete the registration of a Domain, you own rights of use of that domain for the term granted and paid for ONLY: you have full legal use of it as LICENSED to you by ICANN, but you cannot Copyright or Register a domain even though it may become inextricably associated with your Brand, Business, or creative works. It is simply not an asset that you possess - it is licensed to you for use. It's like paying for a mining claim for a specific parcel of real estate: you simply own full rights to dig, mine, and otherwise extract whatever materials detailed in the contract, and whatever you find you keep ---- but you do not own or keep the land beyond the term of the contract. THAT is why once you get a Domain that is as desired and you build it as a Brand, it pays to renew it in perpetuity!

2. You can assert Copyright propriety for all content included on your website (all text, images, color schemes, etc.) by including the Copyright symbol in the footer on each of your web pages along with your claim "All Rights Reserved" and further stipulated in your Policy page, and whether or not you further any claim and protection by Registering that Copyright with the US Patent & Trademark Office is entirely up to you. The laws are pretty specific which type of creative works falls into what class of Copyright, and there are different protections offered for Written, Artistic, Internet, et al, inasmuch they all may or may not constitute "Collections" and "Derivitives" that are also stipulated particularly.
If you choose not to oficially register a Copyright, there are ways to minimize plagairism and mis-use of defined Content, such as the internet monitoring services similar to those offered by CopyScape, which offer some actual measure of assertion of propriety if followed with keen sense of acuity when "enforcement" is the motivation.
In all cases, document propriety before posting online: take photos of images, objects, etc and show clearly some manner to date-stamp the image. For textual content, it is advised to create a Word document file and to archive it all, as it is always automatically date-stamped upon file creation. (this fits perfectly with the emphasized suggestion to always compose original Web Content in Word first, at least to utilize SpellCheck!)

3."Hyundai" is a proper surname, which is quite suitable for a Company Organization and which qualifies as protectable under the auspices of Trade Name, which then as a Mark can indeed be Registerd ... the "H" symbol along with the Name spelled out thus becomes the Mark and the Mark becomes indestiguishable from each other (the graphical logo and the textual logo).

4. It is, in fact, impossible to Register a common word, such as in my case when I filed for my LUXURY brand (I own and operate LUXURY Magazine, LUXURY Television, LUXURY Events, LUXURY Travel, and LUXURY Mall, to name a few) without using a symbol, drawing, or graphical depiction that was to provide the differentiation between the WORD and the BRAND. I had to revert back to using a revised logo to include traditional Lion crest along with the LUXURY text logo in order to get it Registered at the US Patent & Trademark Office for International Rights. *You do not have to live in the US to Register a Mark with the USPTO, and for that Mark to remain protected under International Law.


You have the right idea, mostly, about the issues exisitng around domain names, Copyright vs. Registered Mark, and how even SEO plays into having the relevancy of the page names and key words in the actual business name to appear in searches .... but you have not embraced the larger concept yet.

You will need to fully register your BUSINESS NAME in your local juridiction as however you wish, so then you are official and operating properly .... then you can apply for Registration of your Mark (which is not only whatever text name you desire, but should also include a graphical depiction to represent your Business Name, thus the "Mark") with the USPTO before you begin use online ..... you may wish to buy your domain after you file locally and during/prior to Registration, since they are so cheap, as the availability is often a concern.

Some more discussion here >
Copyright, Trademark, Servicemark & Infringement -- Know the Difference!
What happens if you find company using your domain name?

Article Discussing Rejection of International Registration of Generic Words

[gerrit]

Re: Domain versus trademark : avoiding hassle

Thanks, this already clears some doubts away. So it is correct, if I interpretate your response correctly, that generic words from a dictionary such as "pencil", "car", "table" etc cannot be a trademark as such and thus you don't risk to lose your domainname (example) comparing-cars.com even if a company "Cars Ltd" exists?


The one thing which is different to your situation however is that you talk from a business point of view, in your case Luxury (a good example because it's a generic term too). In my case, I don't run a business, I am a poet. However, since my real name is too hard to pronounce or remember for those not speaking Dutch, I want to use a name for the poetry project, a name by which I can refer to my website and to print on announcements of performances. The name I want is already the name of a poetry booklet I wrote, and only one of three words from the name is already a company name (but it is a generic term and the name I would like for my poetry project contains 2 additional words)

Registering a trademark myself seems a bit over the top because I don't run a business. I am simply a poet who performs by reading his poetry in front of audiences, and hopefully soon has found a publisher to release a first book in stores. But as said, my surname is not brandable, and I quite like the idea of using a more metaphoric name for an artistic project. I mean, my real name is not even remotely artsy :)



My sole concern is to not get involved in a courtcase and lose the domainname which I would use to promote my poetry and the website about my poetry. The name I want to register consists of 3 words, 2 of them being a generic term, one US based and one Canadian company have one of these generic words as name. The combination of the 3 words as I want it, only exists as a song title and book title.

So my one concern is that if I register the domain, I will be able to continue using it. If it is true that a generic term, even when a company uses it, can still be included as part of other domainnames, then I should be fine I guess. I just want to avoid having to change name of the project because by the time a writer or poet gets a tiny bit of fame it would be incredibly inconvenient to have to change the name of the project (since everyone following the project already would suddenly no longer find my website and thus not be aware of new performances and new book releases scheduled)

[Vasili]

Re: Domain versus trademark : avoiding hassle

You do not seem to comprehend the simplest of concepts ....

Any creative work is "Copyright"-able ....meaning you can expect some protection and Rights of Use if you properly assert propriety to the work itself: you need to include that assertion in the footer of each page of your website. You need to visit the www.uspto.gov website and read all you can digest about what Copyright is and what can be protected.
Whether or not you decide to officially Register your works, as mentioned above, is up to you, and your decision either way allows you specific avenues of recourse and enforcement.

A domain name is simply a domain name, as discussed above, and is not copyrightable, but can be filed by a registered business as a "doing business as" filing ... which is why some businesses that cannot afford to buy a domain they would prefer to use that is already in use by an individual have such varying names, and some businesses (and/or individuals) have paid to previous registered users to get the domains that match their business perfectly premium fees to have it transferred to them. You pay for a term of use for a specific domain name and are allowed to use it fully any way you wish (as long as it is legal use). It has nothing to do with Copyright, Registered Marks, or any other protections. Period. Either you continue to pay for renewal, or you lose the right to use the domain, no matter what you promote on the website. It matters what assertions you "announce" on your website (with regard to Copyright) as a claim of propriety for the Content.

Depending on how whatever country you reside in allows businesses to file for status, I can only assume that as an "artist" you still need to file a Fictitious Business Name Statement for your website, titles to books, or any other "product or service" that you are "doing business as" other than your legal name .... in this way you assert propriety of your works and reserve use according to the name you file.
Example: Peter Tosh (Artist) files 1) as a Sole Proprietor Business within the jurisdiction of the City, and can then 2) file separately the website "WordPlay.com" as a Fictitious Business Name > Peter Tosh (Artist) Doing Business As WordPlay.com. When the new book comes out with the title "WordPlay" this also can be filed 3) locally as a Fictitious DBA, as well as 4) Registered with the USPTO as a volume of work that you can fully assert Copyright use for.

You need to drop the "linkage" between Domains and Copyright: there is none, other than what you cleverly create to preserve propriety for. The only way anyone can sue you for infringement is if you are "using a pre-established business name in a similar or dilutive manner in which to garner benefit from previously earned goodwill or brand recognition" .... which is why I suggest you re-read the suggested threads and references until you grasp the overall concept entirely.

[gerrit]

Re: Domain versus trademark : avoiding hassle

My poetry booklets are unpublished yet, but I registered the intellectual property of them (PS my jurisdiction is Spain, although I hold Belgian citizenship. But I live fulltime in Spain and this is also where I perform and where I have registered the intellectual property of my poetry booklets)

The poetry booklets are registered with my real name but the title of 1 of these booklets is exactly the title I would like to use for the artistic project and thus the domain I wish to register. The only hassle I wish to avoid is not realising the name can be claimed by a person or company that --without me realising-- has the rights to this name. Poetry is like music as in: if your band changes name, people knowing only your initial name won't find your website online and think your band has ceased operations rather than having changed name. Hence I wish to avoid that anyone could just take the domain from me.

As said, there are two songs and one book of this name, and one of the booklets of myself is named identically also. Unless Google, Wikipedia and YouTube all failed, no artist or company uses the exact name I wish to register for my artistic project. The only thing which worries me is that there are two dairy farms whose name has one word in common with the name I want ; this word is a generic term and the rest of my desire name is obviously different. Still I would not like the idea of having to change the name of my project (and losing all mouth-to-mouth advertising from those following the project from the start) because some dairy farm 4000 km away has a name that has one word in common with the name I use for my website and for announcing my performances.

Maybe this is a better comparison: "mind" is a generic term from the dictionary. There is a globally known rock band called Simple Minds. There may also be some obscure company named Minds or where Minds is part of the name. And it would be inconvenient for the rock band if they suddenly see some far away company they never heard of claiming they were not authorised to own SimpleMinds.com
(random example using a famous rock band to make my issue as clear as possible)

PS: sorry if the question sounds stupid, I'm just concerned about this as I have no bad intentions. I rather change name of the project before launching it, rather than having to change it after a while of promoting my writings with the name. I am not after anything mala fide, just wishing to promote my poetry readings and future publications without having to worry about having to re-name my project due to domainname issues.

[Vasili]

Re: Domain versus trademark : avoiding hassle

You do not seem to comprehend the simplest of concepts ....

You need to drop the "linkage" between Domains and Copyright: there is none, other than what you cleverly create to preserve propriety for. The only way anyone can sue you for infringement is if you are "using a pre-established business name in a similar or dilutive manner in which to garner benefit from previously earned goodwill or brand recognition" .... which is why I suggest you re-read the suggested threads and references until you grasp the overall concept entirely.

Read. Learn. Explore. Do!