american TM's - advice please

pendragon · Apr 22, 2008

a product 'ABC', has a US website called 'ABC.com' It states ABC TM everywhere.

the 'ABC.co.uk' is free to reg. The product is now available in the UK via post from US.

ABC is the name of the product, not the company.

Sorry its a bit cryptic, but if you get my gist, your thoughts would be appreciated as to whether i can/should reg the co.uk

woopwoop · Apr 23, 2008

sure you can reg. but are you safe? it depends.

A few things, just because it has 'TM' doesn't mean that it's registered. tHE (R) means that it's registered.

Even if it's not registered it still has unregistered trademark protection in the class of goods it's trading.

Iif you can think of another use for the domain than the industry the company is trading in then you are probably safe. But some trademarks (registered or otherwise) cannot escape the class that they are trading in.

For example. If the domain was virgin.co.uk you can argue that you're using it in another class of goods. If the domain is virginmobile.co.uk then you are caught with your pants down - obvious trademark infringement/bad faith (even if Virgin was a tiny company)

Hope this helps a little.

In summary even if it's an american company without registered trademark protection, they still may have done enough to establish unregistered trademark protection in The UK- so if the domain is like 'virginmobile.co.uk' (2 unlikely words put together, 1 word describing a class of goods) I wouldn't bother with it.

pendragon · Apr 23, 2008

Cheers for that. It is actually a brand name and I would use it purely to affiliate on their product.

woopwoop · Apr 23, 2008

yep - then it's a bit iffy - this reminds me of another thread on here. I remember following a link in a reply which was the case between some guy and tesco.

He had used a bunch of tesco domain typos and plurals etc. to capture traffic and make money from tradedoubler (under a tesco affiliate scheme).
Summary - his revenues went from £20 a month to £27,000 in one month. Tesco caught on took him to caught and got all the domains and paid him zero commission.

I'm not saying that this would happen (it might be worth the risk if you had a chance of making that kind of money) but there has been a running debate about trademarks in affiliate schemes. I'll look out for the old thread, it's interesting.