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  1. #1
    Affiliate Manager AffiliateBuddha's Avatar
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    Hi,

    there is a famous company that sells widgets, and it's trade-mark registered domain is widgetstore.com.

    A domain name that I own, which also sells wigets as an affiliate of of another wiget shop, is called Discountwidgetstore.com .

    Now, Widget is not anyone's trademark, nither is Store - infact widget is a product that is available at thousands of stores worldwide, with my domain, I want to have a store where I sell discount wigets and hence, registered discountwidgetstore.com.

    My question: does discountwidgetstore.com infringe with trademark laws of widgetstore.com ?

    Thanks,
    AB

    ---
    "The tongue like a sharp knife... Kills without drawing blood."~ The Tathagata

  2. #2
    Schlaumeier cumbrowski's Avatar
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    May be.

    Did you checked, what widgetstore.com's trademarks are?

    They have to provide an explanation for the trademark. Especially if the Trademark contains a generic word or phrase.

    Carsten

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  3. #3
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    As Carsten says ... maybe!

    Lets use Musicstore.com as the TM ... DiscountMusicStore.com would not be infringement, or Carparts.com making it DiscountCarParts.com ... that wouldn't be either but it all depends on the real TM and if your manipulating it's use as a source identifier for that or those products.

    <font size="2" face="Verdana">Haiko


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  4. #4
    Affiliate Manager PetsWarehouse.com's Avatar
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    That would be an infringement IMO hands down.

    What if we look at this example MacDonalds and MyMacDonalds?

    You would receive a C&D letter immediately.

    You are using a similar or permutation of their mark.

    But if you were in another channel of trade it would be ok.

    MyMacDonalds toys and games not selling burgers would be ok.

    I disagree with the &lt;Musicstore.com as the TM ... DiscountMusicStore.com &gt; example if they both sold music the trademark holder would win.
    It referrs to the source of music.
    Haiko, why do you think it would not?

    Henry
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  5. #5
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    That I know of, it would not be trademark infringement. Once a brand name has become the standard term for the product, the trademark is no longer protected. For example, Kleenex and Q-Tips are two products whose brand name has now become synonomous with the product. That's why they now call it "Kleenex brand kleenex". If a widget has become the standard name for the product itself, not just the brand, then anyone can use the term widget to describe their own widgets. This is the determining factor. If you could rightfully use the name Widgetoutlet.com, then there should be no trademark protection for DiscountWidgetStore, despite WidgetStore.com. As long as the name widget itself is not protected, you should be okay. It's obvious that you are not trying to capitalize on their name, it's too generic.

    Joe Flores
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  6. #6
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    Also, MyMacDonald's is kind of a moot point because MacDonald's is not the product type, it's the company name. As long as a widget is an item, not a protected brand, this is apples and oranges.

    Joe Flores
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  7. #7
    I like traffic lights
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    &gt;That would be an infringement IMO hands down.

    I don't thing so.

    If I brand my dog food "tailwag" and I run my online store at tailwagstore.com then even without registering a TM, I could have an argument of "passing off" or "confusion" of my common law trademark if someone started using "discounttailwagstore.com" to sell a competing dog food (or my dog food if they weren't licenced by me). Because it's a "fanciful" mark - like eBay.

    If I brand my dog food "dog food", and run my store at "dogfoodstore.com" then I haven't got a leg to stand on if someone starts up at "discountdogfoodstore.com" as my mark is descriptive and not fanciful in any way.

    Jimmy James fan club membership # 3312

  8. #8
    Affiliate Manager PetsWarehouse.com's Avatar
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    "dog food" would be a generic mark not being capable of registration.

    Henry
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  9. #9
    Affiliate Manager PetsWarehouse.com's Avatar
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    Ok instead of MacDonald’s "burger king" same rules apply.
    A trademark identifies the source of the product not the product itself. However that is not to say it cannot ID the source and the product there are many possibilities!

    Henry
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  10. #10
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    Henry,

    CarParts.com is a TM ... If I reg DiscountCarParts.com It's not a violation, same with DiscountMusicStore.com ... Yes, it is a source Identifier as they sell Music, but DiscountMusicStore.com definately would not infringe because now the source identifier is Discount and the product is music.

    <font size="2" face="Verdana">Haiko


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  11. #11
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    Absolutely. But our post originator said that the term widget is used widely to describe the product, not the brand. The name DiscountWidgetStore, in my opinion, is just as different as WidgetWerehouse, unless the term widget itself is trademarked. Now, if the name was WidgetWorldBonanza, by all means, DiscountWidgetWorldBonanza would be infringement. But I don't picture anyone supporting the name Widgetstore as a trademark any more than Carstore could override DiscountCarStore.

    Joe Flores
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  12. #12
    Affiliate Manager PetsWarehouse.com's Avatar
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    Agree!

    Henry
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  13. #13
    Affiliate Manager PetsWarehouse.com's Avatar
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    Haiko
    I would disagree

    &lt;DiscountMusicStore.com definately would not infringe because now the source identifier is Discount and the product is music&gt;

    The source identifier is not "discount".
    By source id it means the source of the product.
    "Discount" is not the source of the music.

    take a trademark name like Nathans (hot dogs) do you think you could start a biz called "discount Nathans hot dogs"? I think you would find yourself in Federal court in about 20 days with an injunction stopping you.

    I'll ask Bob when he comes back for his opinion, he has litagated his trademark many times and always won such infringements.

    Henry
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  14. #14
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    The point is that the term Widget is not a brand name, it's a product, whereas Nathan would be. In fact, Nate's Hot Dogs would be useable and that's an even better example of how little trademark rights would effect that situation.

    Similarly, you couldn't trademark Hardware Store and then sue Nathan's Hardware Store. Picture Lumberjack suing someone named Jack's Lumber...now there's a controversy!

    Joe Flores
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  15. #15
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    Henry,

    We are not talking Nathan's we are talking about generic terms that are joined together, the addition of the word Discount does act as the identifier in that example. Generic words joined together as a TM is usually a stylized mark and not a real TM ... try getting a section 15 on that LOL!

    I've won a few TM cases myself

    <font size="2" face="Verdana">Haiko


    The secret of success is constancy of purpose. ~ Disraeli
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