Domain Manage

Trademarks that are dictionary words

Discussion in 'New Domainers' started by jd18, Jan 30, 2009.

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  1. jd18 United Kingdom

    jd18 Active Member

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    Hi

    Having read through the forums, i have noticed that trademark domains are an interesting subject.

    If I was to register a domain name that was a dictionary word and also happens to be a name of a company - where does that leave me?

    Is it a good idea?

    Thanks

    Jason
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. crabfoot United Kingdom

    crabfoot Active Member

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    I'm fairly new to this game, too - but I know a little about trademarks.

    The question is, has the company trademarked their name? Probably - but remember the fun about Oil of Ulay, where somebody came in, registered the mark, and then hit them with a "cease and desist trading" order? So they changed the name to Oil of Olay, and left the nasty men with nothing but bills ... they were too greedy, those nasty men.

    When you register a trademark, you cannot cover all the bases. Every trademark is limited in the field of its application. It depends where the trademark is registered as to how many fields it can cover, but roughly three quarters of the mark defined business areas can be covered by one company.

    It is a known practice that the remaining areas can be trademarked by another independent company, whose services can be bought (ie for payment, they will renew their rights regularly, and not use the trademark) - but that is rare, and to make it legal, they have to officially use the mark for something.

    If you buy the domain, you could use it - but if you use it to trade in areas where the trademark is effective, you will probably be legally forced to turn it over to the trademark holder for a nominal fee.
    Then again, if you use it for purposes unrelated to any trademarked areas, they can't touch you for it. In most of the US, if you have a physical business working this way for a couple of years, it gives you trademark rights, even without those rights being formally registered.

    What I would do is register the name, and use it for a purpose clearly unrelated to the trademark holder. If they have "bought insurance" by covering the remaining areas of trade, the "other company" will come in with a "cease and desist" threat - then you have to roll over and sell them the domain for whatever they offer (+15% - always worth a push).

    If the main trademark holder find your activities distract their advertising, they will make you a nice offer for the name. Then you might be able to push them a little higher -

    Nobody wants to pay lawyers - at the level of law we are talking here, the man who actually makes the threats is charging £500 an hour. So if there is any trouble, it will be very expensive for the trademark holder. They will want a quick solution - just don't get too greedy.

    Sometimes, trademark holders don't bother, because the clear separation of activities is enough. For example, in UK no-one confuses Morrisons supermarkets with Morrisons builders.

    But if that name is CosaNostraTrucking .co.uk, I wouldn't bother messing with that ...
     
  4. accelerator United Kingdom

    accelerator Well-Known Member

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    Trademarks have classes, i.e. the types of products or services that the trademark relates to. If you don't mention the company or the products or services the trademark relates to on a site you build on the domain, you aren't trading in bad faith - however, this usually means it's pointless for development anyway. You could buy it and attempt to sell it to someone else, and that would be a case of buyer beware.

    Rgds
     
  5. retired_member16

    retired_member16 Banned

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    Where is the proof of that?

    The name was changed to make it more European friendly. See Jif and Cif
     
  6. retired_member12

    retired_member12 Retired Member

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  7. crabfoot United Kingdom

    crabfoot Active Member

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    It's trade gossip - no proof.

    Europe friendly? Cif/Jif, I can see that, and if Mars had launched Marathon as Snickers ...
    So, sometimes products are launched with a name, and it is changed later when the product is established in the market.

    But consider - oil of Olay was the original name, but it was only sold under that name in South Africa, where it was first made.

    The names used in Europe were chosen for each market by the original manufacturers.
    Oil of Ulay in UK and Ireland, Oil of Ulan in Scandinavia, Oil of Olaz in Germany/Austria/Holland.

    Proctor & Gamble bought the company in the 80s. I wouldn't be surprised to find that the "ball was dropped" somewhere in the purchase. They built up sales by selling in the US - I don't know what name they used originally in US, but it is Oil of Olay now. Ulay could have run into problems in the US -

    P&G said that the change was to unify the brand worldwide, but it is still Oil of Olaz in Germany and Austria. In Holland, which is a relatively small market, the name is Olaz (without "Oil of").

    That's why I don't believe the P&G spiel.

    This sort of thing has happened before. Cars made in Germany by Daimler have been sold as Mercedes for about a hundred years, because the original London Daimler dealer trademarked Daimler (and sold the name to Austin).
    And if you go into record labels - EMI trademarked most of the big US names in UK, so when Columbia came into the UK record market in the 60s, they had to invent a new name for themselves (CBS).

    Sometimes a trade name has to be changed - just ask a Pole what OSRAM means in Polish ...
     
  8. retired_member12

    retired_member12 Retired Member

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    Come back Opal Fruits, that what i say!
     
  9. SecNam

    SecNam Moderator Staff Member

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  10. OwnThisDomain.co.uk United Kingdom

    OwnThisDomain.co.uk Active Member

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  11. crabfoot United Kingdom

    crabfoot Active Member

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    LOL that is a humorous thread - worth reading!

    A slightly more accurate and polite translation for Osram from Polish is "I will dump on you", with the inferred meaning "from a great height".

    Not very good as a trademark, but a wonderful distillation of meaning into a single word.

    Also an interesting mention of why Olay is not used in Scandinavia ...

    but why concentrate on trying to make me look like a prat? (Noilly Prat? Leave it out, it says vermouth and tastes like gasoline).

    Jason was asking what to do with his idea.

    I suggested he should register the name, and work it up in an area unrelated to the trademark holder's business, with the objective of selling it to the trademark holder if it is able to impinge on his advertising.

    That is what the discussion should focus on - not whether I'm yet another BS merchant. I'm just learning domaining.

    Hey, I'm not a troll, and I actually own a European trademark, which I registered myself.

    I can sign passport applications, I have passed UK government positive vetting for honesty and integrity, I have studied business formally beyond degree level (and chemistry, microbiology, robotics and computing), and I speak French like a native (of Louisiana).
    Is that good enough ...
     
  12. OwnThisDomain.co.uk United Kingdom

    OwnThisDomain.co.uk Active Member

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    Good enough for me! I, for one, was never trying to make you to look like that!

    You may be new to domaining but you certainly seem to know your stuff on trademark history!

    Welcome and enjoy the forum!

    Best wishes, Richard
     
  13. philipp United Kingdom

    philipp Active Member

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    Well I guess if your story is correct, then the proof will be in the TM database with 'Ulay' still belonging to the antagonists - seems unlikely to me though.

    P.
     
  14. crabfoot United Kingdom

    crabfoot Active Member

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    Domain Registrar

    Where to look? The TM quick look-up used to be on the UK Patent Office website, but I can't find it - along with a lot of other things - since the EU Office got into full swing. And if the problem came up in US, it might not be documented - it only takes a Mr Ulay with a historic right to the name to get obstreperous over there, and P&G go onto the alternative strategy.

    But is this relevant? No!

    Can we please get back to the original intention of the thread, before Admin has to step in?

    Jason asked for advice. I told him what I would do. Since then, nobody but Accelerator has said anything related to the original question.

    I am de-subscribing to this thread. I've got a life to lead.

    Please, leave the side issues I raised alone. They are not important.

    If your thoughts will not help Jason answer his question, start another thread elsewhere. If I'm in it, send me a PM, I have stopped looking.

    Thread creep is developing a new meaning. Don't tell Google . . .
     
  15. philipp United Kingdom

    philipp Active Member

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    The search tool is at ipo.gov.uk/tm under 'online services'.

    It shows that 'Oil of Ulay (Olay)' has been a registered TM since 1964, now under Proctor & Gamble's ownership.

    Yes, it is relevant because the previous story about 'nasty greedy men' given as a demonstration of TM law does not stand up! That's pretty important IMHO.

    P.
     
    Last edited: Feb 2, 2009
  16. crabfoot United Kingdom

    crabfoot Active Member

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    None of this is relevant, because it gives no guidance to Jason, who started this thread seeking help.

    So the TM has been registered since 1964, and P&G are the current owners.
    Once upon a time the look-up would have given a little history.
    So, without knowing if the TM was dropped in the 80s, and without knowing if there was an objection to "Ulay" in the US, you conclude I am talking tripe.

    Get a life, philipp. You could probably build a minisite in the time it took you to mine that info.

    A while back I sold a copy of Winston Churchill's "The Few" speech on eBay for good money. Churchill did not write that speech, and it is debatable if he ever uttered it. Many of his radio speeches were spoken by actors. The collector that bought the speech was completely aware of those points. Sometimes one needs to set aside the truth to achieve the objective. Whatever, a great speech ...

    Whether the story is true or not does not give any advice to Jason. And I have given two other instances where the principle of the illustration is heavily documented. Stop messing about, If you can't add anything constructive.
     
  17. philipp United Kingdom

    philipp Active Member

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    I hope you don't take further offense, but your story was posted as guidance to a question about registering and dealing in trademarks.

    If the story is pure invention as it appears, then it only serves to mislead the original poster.

    P.
     
  18. crabfoot United Kingdom

    crabfoot Active Member

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    Philipp,
    I'm not taking offence - my comments are intended to guide you.

    The story is not pure invention - you can find other comments about it on the web - but only the P&G side of the story is public.
    To misquote Mandy Rice-Davies "They would say that, wouldn't they"?

    As a fable, it serves its purpose. That is, it presents a story with a clear moral in the conclusion.

    I have said already that there is no easy proof of the story. You cannot prove I am wrong, but now you say it is misleading.

    Look back at my post. Take the "ulay" fable out. Tell me how I am misleading Jason.

    On second thoughts, don't bother.

    You can't argue with a rabid dog ...
     
  19. retired_member12

    retired_member12 Retired Member

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    Crabfoot, instead of having pops at philipp, why don't you elaborate more on your version, seeing as, to quote you, "...only the P&G side of the story is public". What is your source, so strong, that we are pursuaded by what you say?

    All philipp has done is check the available records and quote them, you have not proven anything, other that tell him to find comments on the web!
    Why don't you prove you're not one of those cocky little sh1ts who likes the sound of his own 'keyboard', instead of throwing your dummy out of your pram and belittling another member just because he has questioned whether what you are saying is valid?
     
  20. crabfoot United Kingdom

    crabfoot Active Member

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    But I have already said I don't have proof. Several times.

    A member has registered a domain, the name of which is both a dictionary word and a trademark. He seeks advice as to how he can monetise his name.

    I gave him advice, and made a suggestion. Since then, no-one has made any significant contribution to the discussion of what to do with the domain.

    But people have been nit-picking. I don't know why they want to do that, it helps no-one.

    I could go back and delete that side story - but it illustrates the fact that sometimes a trademark may not be properly registered, and can be "dropped". Treat it like a fable, and it serves a purpose.

    Talking of fables - several posters here seem to think that the test of truth is whether something is posted on the web.

    Read the thread properly, Doubletap.
    Calling me names and defending a nitpicker does nothing for your kudos.

    I'm only returning to this thread in hopes of finding another answer to the original question. I am new to domaining, and I am sure there is a better answer than mine.
     
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  21. philipp United Kingdom

    philipp Active Member

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    Bored now, I don't think there's any further value to be found here :rolleyes:

    P.
     
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