More Trademark Clearing House Abuse: Texas & Venture Triggers Notice

A couple of weeks ago we wrote about Trademark holders of generic terms applying to the Trademark Clearing House (TMCH) where trademarks on many of which were causing some of those 500,000 “warnings” to go out to people trying to register a new gTLD domain name.

Today we bring you the world famous trademarks for the term “Texas” and “Venture”

“”1. TEXAS
Jurisdiction: United States of America

Goods: IC 041. US 107. G & S: Educational Services-Namely, Providing College and Graduate Level Courses of Instruction, Continuing Education Courses and Seminars and Opportunities for Students to Participate in Research Programs, and Entertainment Services-Namely, Providing College Athletic and Sporting Events and Performances of Dramatic Works.

FIRST USE: 19140000. FIRST USE IN COMMERCE: 19140000

International Class of Goods and Services or Equivalent: class number 41: Education; providing of training; entertainment; sporting and cultural activities.

Trademark Registrant: Board of Regents, The University of Texas System

Trademark Registrant Contact: 201 West 7th Street, 78701 Austin, TX, US””

I guess Texas A&M and Texas Tech, and Texas Christian University (TCU) are all in violation of the The University of Texas System trademark and should be ordered immediately by a court of competent jurisdiction to have to change their name might as well go after Texas High School as well.

Ridiculous

As for the 2nd generic trademark for today we have the word “venture” which has two trademarks:

1. Mark: @VENTURE

Jurisdiction: United States of America

Goods: RISK MANAGEMENT INFORMATION SERVICES International Class of Goods and Services or Equivalent:

class number 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Trademark Registrant: Hartford Fire Insurance Company Trademark Registrant

Contact: One Hartford Plaza, Hartford, CT, US

2. Mark: VENTURE

Jurisdiction: United States of America Goods:

G & S: LIFE INSURANCE SERVICES, NAMELY UNDERWRITING AND ADMINISTERING ANNUITIES. FIRST USE: 19850921. FIRST USE IN COMMERCE: 19850921

International Class of Goods and Services or Equivalent: class number 36: Insurance; financial affairs; monetary affairs; real estate affairs. Trademark

Registrant: John Hancock Life Insurance Company USA – Declaration

Trademark Registrant Contact: 601 CONGRESS STREET, 02210 BOSTON, MASSACHUSETTS, US”

I wonder how Capital One has been allowed to spend tens of millions of dollars on Television commercials promoting their Venture Card?
Isn’t a credit card something that falls into financial or monetary affairs?
Isn’t the new gTLD .Ventures itself in violation of the world famous Venture trademark?  Shouldn’t any registration for a .Ventures domain trigger the TMCH notice?
Ridiculous
Fail!



			

.Berlin Dirk Krischenowski Blasts ICANN Over TMCH Which Has “Largely Failed”

Internetworld.de, interviewed Dirk Krischenowski of .Berlin who blasted ICANN and the performance of the Trademark Clearing House (TMCH)

The article was published in German and we used Google translate.

Dirk chatted with the German publication about the recently completed Sunrise period for .Berlin, which is now in available to be registered.

In the Sunrise Period trademark owner could register .Berlin domains with their trademark on the left of the dot.

As most know to be allowed to file a Sunrise application  you have to registered the mark with the TMCH.

Here are some of the more interesting quotes from the article:

On the TMCH; “What sounds so nice in theory, has hardly worked in practice , says Dirk Krischenowski , managing director of the company dotBerlin that manages these new top -level domain.”


“On 16 March was the sunrise phase of dotBerlin to an end. How many brand owners have taken advantage of the opportunity to present to the nature of their brand. Secure berlin ?


Dirk Krischenowski :

“Not many .

By the end of the Sunrise period nearly 200 branded domains have been registered , mostly from internet groups from the United States .

At the German brand owners the Sunrise phase is mostly gone .”

How do you explain the reluctance ?

Krischenowski : Many brand owners do not know the procedure.

“ICANN is not communicative able to convey the process globally.”

“The Trademark Clearinghouse is therefore largely failed. In the corresponding database about 27,000 brands worldwide are registered , of which only about a thousand from Germany.”

The have made only the very large companies mainly in Germany and worldwide .

In addition, many trademark attorneys have the brand owners discouraged from registration in the Trademark Clearinghouse , also because they earn more later with lawsuits.”

TMCH Has Caused More People Not To Register 450K Domains, As New gTLD’s Pass 350K

The Trademark Clearinghouse (TMCH) said today that is has delivered  500,000 Claims Notices (CNIS) of which 95% of the queries for trademark terms are not being followed through to a live registration.

That means that up to 475,000 new gTLD domain names may have gone unregistered due to the THCM, let discount that number for some potential duplicate domains and call it 450,000 domain names

A potential registrant of a new gTLD receives a notice as a warning to anyone attempting to register a domain name which matches a trademark term recorded in the TMCH.

That news was released by the TMCH on a day where the total number of new gTLD registrations have passed 350,000.

10,000 brands and businesses and over 28,000 trademarks have been recorded within its database.

A few days ago we pointed out that there  a lot of generic words like “The”,  “Cool”,  “Big” and “Host” to name a few are included in the 28,000 TMCH registrations, which could be scaring off registrations which would be perfectly fine and quite legal.

So if someone attempt to register a domain like cool.email or the.email they will get a TMCH notice based off the registration of “cool” or “the”

In those cases the TMCH is not serving the new gTLD community well.  Scaring off what would be perfectly valid registrations is nothing to gloat about.

The TMCH should never have allowed registrations for generic words.

“Google” is a brand

“The” is not

 

TMCH Has Plenty Of “Trademarks” of Generic Words

In attempting to pre-order some new gTLD’s I have had to review trademarks filed with the

Mark: hosting

Jurisdiction: Benelux Office for Intellectual Property (BOIP)

Goods: Rubber, guttapercha, gummi, asbest, mica en hieruit vervaardigde producten voor zover niet begrepen in andere klassen; halfbewerkte plastic producten; dichtings-, pakking- en isolatiemateriaal; niet-metalen buigzame buizen.

International Class of Goods and Services or Equivalent:

class number 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Trademark Registrant: Hosting Concepts B.V.

Trademark Registrant Contact: Willem Buytewechstraat 40, 3024BN Rotterdam, NL

Mark: GOLD

Jurisdiction: United Kingdom

Goods: 9: Computer software, including software for the downloading of music, audio and text by means of a global computer network; computer firmware; floppy discs, hard discs, audio cassettes, radios, compact discs, CD ROMs; teaching apparatus; sound recordings including musical recordings; video recordings relating to musical performers and performances; electronic publications all relating to radio broadcasting, radio programmes, music, sport, musical entertainment and culture; electronic media and magnetic media all bearing music or sound; radios.,16: Paper and paper articles, photographs, cardboard articles, newspapers, printed matter, books, journals and magazines all relating to radio broadcasting, radio programmes, music, sport, musical entertainment and culture; comics; stationery; instructional and teaching material.,38: Radio telecommunications services; electronic communication services; radio broadcasting, digital radio broadcasting; television broadcasting services; namely, the broadcasting of radio programmes and music to televisions via cable, satellite, freeview and other digital means; broadcasting of music or radio programmes over the Internet or other computer network; electronic transmission of streamed and downloadable audio and video files relating to music or radio programmes via electronic and communications networks as well as by means of a global computer network; electronic mail services; providing of access to on-line chat rooms and bulletin boards; web casting of music and radio programmes; telecommunication of information including web pages, computer programs, text and any other data; relating to music or radio programmes; providing access to digital music websites on the Internet or other computer network; news agency services; transmission of written and digital communications relating to music or radio programmes; leasing and rental services in connection with radio telecommunications apparatus and equipment; operation of chat rooms relating to music or radio programmes.,

41: Sporting and cultural activities; musical entertainment; organisation of entertainment and cultural events relating to music or radio programmes; radio entertainment; interactive music and radio entertainment services provided via the Internet or other computer network; production, presentation, distribution, syndication, networking and rental of radio programmes, music and, sound recordings; electronic publication services; electronic games services provided by means of the Internet or other computer network; providing digital music from Internet websites; downloading of radio programmes, sound, still images or data from the Internet or other computer network; organisation of competitions, concerts, live shows and cultural events relating to music or radio programmes; studio services for the production of radio advertising; publishing services; nightclub and discotheque services; news reporter services; arranging and conducting of business and commercial conferences and seminars; advisory and consultancy services relating to the aforesaid.

International Class of Goods and Services or Equivalent:

class number 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

class number 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

class number 38: Telecommunications.

class number 41: Education; providing of training; entertainment; sporting and cultural activities.

Trademark Registrant: This is Global Limited

Trademark Registrant Contact: 30 Leicester Square, WC2H 7LA London, GB

Mark: biG

Jurisdiction: Italy

Goods: carne pesce pollame e selvaggina estratti di carne frutta e ortaggi conservati essicati e cotti gelatine marmellate composte uova latte e prodotti derivati dal latte oli e grassi commestibili caffe’te’cacao zucchero riuso rapioca sago succedanei del caffe’ farine e preparati fatti di cereali pane pasticeria confetteria gelati miele sciroppo di melassa lievito e polveri per fare lievitare sale senape aceto salse condimenti spezie ghiaccio trasporto imballaggio e deposito di merci organizzazione di viaggi

International Class of Goods and Services or Equivalent:

class number 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

class number 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

class number 39: Transport; packaging and storage of goods; travel arrangement.

Trademark Registrant: S.p.A. Egidio Galbani

Trademark Registrant Contact: Via Togliatti, 8, I-20066 Melzo, MI, IT

Mark: THE

Jurisdiction: Benelux Office for Intellectual Property (BOIP)

  • Trademark Registrant: Goallover Limited 7 Brayfield Terrace, Islington, London

 

I have also had to click on notice for a new gTLD that contained the word “cool” and “hot”

I’m sure I will come across a bunch more.

Lets not fool ourselves there is gaming at the trademark level and at the TMCH level.

 



			

Brands Finally Find A New gTLD They Like For Sunrise .Company has a Few Hundred

Much has been made of the lack of Sunrise applications and Brands seeking their matching trademark or brand domains in the new gTLD rollout.

I just reviewed the Zone file for the new Donuts gTLD .Company and it seems like this is a gTLD Brands are ding some registrations on.

Although still not a huge number there does seem to be about 3x the activity in Sunrise than the average TLD.

I actually see a lot of companies that grabbed a Sunrise application for their .Company domain that  I have not seen play in the new gTLD space in prior releases.

I couldn’t help but notice carinsurance.company, the only way that domain could have been grabbed in Sunrise is by having a trademark filed with the Trademark Clearing House (TMCH)

“Car Insurance” trademarked?

Also Patagonia a company whose own gTLD application for .Patagonia was rejected by ICANN over GAC objection finally got what I believe is its first new gTLD domain name Patagonia.Company

Here is a partial list of companies and brands that got their .Company domain (not that any company’s name list in the ICANN collision list for .company was not available for registration)

abbott.company
acclarent.company
adacor.company
aia.company
alberteinstein.company
alexandermcqueen.company
alexmarie.company
allfundsbank.company
alten.company
alza.company
amada.company
amerivest.company
amil.company
angrybirds.company
anthropologie.company
apc.company
asp.company
athena.company
baskin-robbins.company
baskinrobbins.company
bce.company
bet.company
bidvestbank.company
bobcat.company
chevron.company
ciscosystems.company
citi.company
citibank.company
citigroup.company
citrix.company
citroen.company
cointreau.company
columbia.company
columbiasportswear.company
conex.company
cordis.company
cscglobal.company
datapipe.company
davinci.company
deluxe.company
depuy.company
dialogic.company
dillards.company
dixie.company
dkny.company
doc-martens.company
docmartens.company
dolcela.company
dollarshaveclub.company
donnakaran.company
donuts.company
dr-martens.company
drmartens.company
dsc.company
dunkinbrands.company
dunkindonuts.company
dupont.company
ea-sports.company
easports.company
easynic.company
easyspace.company
einstein.company
emusic.company
escada.company
etro.company
eurotunnel.company
fae.company
fibe.company
foto.company
freepeople.company
gaytravel.company
georgia-pacific.company
gettyimages.company
grainger.company
grohe.company
guitarcenter.company
harley.company
harley-davidson.company
harmon.company
hostpoint.company
icap.company
ifm.company
immo.company
ipad.company
istock.company
istockphoto.company
jandj.company
jnj.company
johnson-johnson.company
johnsonandjohnson.company
kindle.company
legalzoom.company
lego.company
level3.company
lockheed.company
lockheedmartin.company
longchamp.company
louis-xiii.company
louisxiii.company
lush.company
m4m.company
marshall.company
maserati.company
medium.company
mesh.company
metropole.company
mitsubishi.company
monsanto.company
moodys.company
moodysanalytics.company
moodysinvestorsservice.company
motonovo.company
mountgay.company
msd.company
netnames.company
neutrogena.company
nvidia.company
pair.company
patagonia.company
peugeot.company
pizza-hut.company
pizzahut.company
rackspace.company
raw.company
remy-martin.company
retailmenot.company
rolls-roycemotorcars.company
royalty.company
sedo.company
seed.company
sennheiser.company
simon.company
stevemcqueen.company
striva.company
t-mobile.company
t-systems.company
tds.company
telekom.company
thescore.company
theworld.company
thinkorswim.company
toro.company
triangle.company
trixie.company
truffaut.company
turkcell.company
tyco.company
unibet.company
unitedhealth.company
unitedhealthcare.company
unitedhealthgroup.company
vegeta.company
vinci.company
visa.company
voipfone.company
weather.company
webnames.company
zoosk.company