Trademarking of generic names such as 24.com

[afriq]

Hi there,

I'm in a peculiar situation right now, but my gut feeling tells me that there is nothing to worry about. Here goes ...

I've registered host24.com early in 1999, and have been using it actively ever since. A large corporate company (very large, actually) in South Africa registered 24.com late in 2000, and they've also tried to trademark said domain (24.com). However, it appears as if their attempt to register it with the U.S. Patent and Trademark Office failed:
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75877429

I'm not surprised, since 24 is a very generic term, don't you think?

Ok, here comes the scary part. I've received a letter from them yesterday, asking me to either delete the domains host24.com and host24.co.za, or transfer it to them, since I'm infringing their "trademarked" 24.com! They haven't supplied any trademark references, but I'm sure they've managed to secure the local (South African) trademark. They also claim that 24.com is well known, and is being used extensively on on of their domains, http://mweb.co.za. Not true, a search on Google for 24.com merely returns one link to the url 24.com, and that redirects to the MWeb site. I could not find any usage of 24.com on the MWeb site.

Now, MWeb is one of the largest ISP's in South Africa, and they are the people that requested the corporate legal guys to get on my case.

Ok, my argument is basically as follows:

- I registered host24.com long before they got 24.com

- 24.com is so generic that they will have to approach each and every domain ending in 24.com (and believe me, there are many).

- host24.co.za has nothing to do with 24.com.

What are your views on this?

thanks,

Johan

 

[Michael Wechsler]

Generic names cannot be trademarked. Many have tried adding the ".com" after the name to claim something more than it is. Nobody has on or seems likely to win such a case because the result would be impossible to deal with practically. Some companies have trademarked their logo. That is a different issue. In fact, a company similar to your favorite legal site here attempted to do the same. They also were unsuccessful but apparently were successful in trademarking a logo.

 

[afriq]

Originally posted by thelawprofessor:
Generic names cannot be trademarked. Many have tried adding the ".com" after the name to claim something more than it is. Nobody has on or seems likely to win such a case because the result would be impossible to deal with practically. Some companies have trademarked their logo. That is a different issue. In fact, a company similar to your favorite legal site here attempted to do the same. They also were unsuccessful but apparently were successful in trademarking a logo.

I agree ...

Anyway, we've come to the conclusion that these guys don't have a case:

- the local (South African) trademark is still pending
- they did not even try to register 24.com as a trademark, but 24com
- the logo is another story, it includes the 24.com bit, but does not even remotely look like ours
- both the trademark registration and domain registration were done after we've registered ours

But there is a twist in the tail. The domain was registered before ours, but somehow it either lapsed or the transfer to the new owners caused the date to change. You see, the company that lodged the complaint is MWeb Connect, and it just so happens that they took over the 24.com domain from Media24 a week after I've registered host24.com. Media24 filed an application to trademark 24.com in 1998, but that is also still pending.

There are numerous links in this regard, but just check out this:

Group offerings will undergo major rebranding to make M-Web the sole parent brand. 24.com will be absorbed into M-Web on 7 April (2000). Internet Africa and other 24.com users will be able to transfer their personalisation and calendar settings to mweb.co.za. Internet Africa members will retain their e-mail addresses and offered additional M-Web e-mail accounts. M-Café becomes M-Web Chat new M-Web Tickets will house Computicket and M-Web Travel Experts will become M-Web Experts Siyanda and M-Web Business Solutions remain unchanged as do Moneymax and Netcover;

This basically kills any common law case that they might have, don't you think? Keep in mind that they haven't use the mark 24.com in any media campaign ever since the takeover early in 1999. What a waste of a good domain!

This is from http://www.computerweek.co.za/pebble.asp?relid=6640

I'll keep you posted!

 

[Michael Wechsler]

Thanks for keeping us posted.... interesting stuff. Would enjoy hearing further developments.