I hope that with the proliferation of TLDs this happens often enough that people get sick of it and we start enforcing the rule that generic words like mountain and road can't be trademarked. I'd prefer nothing, including Apple, get grandfathered in. Apple can go back to being Apple Computer or apple.com, whichever they prefer. I'd like the startup community to insist that startups like remote.com keep the .com in their name. Some companies, like hotels.com / hoteles.com still get it :)
What constitutes a generic term? Could I use Rottweiler as a trademarked brand? What about Dog or Canine? What if I combined “generic” terms like DogHead?
I think this proposal is too obtuse. These cases bother us because the man who founded Backcountry Denim was not proven beyond a reasonable doubt to have intended to encroach on the “backcountry.com” brand, nor was it proven that he failed to take reasonable precautions to avoid doing so. If that is the fair and just way to rule on these cases then that should be made to be the way that the judiciary rules. Proof of innocence beyond a reasonable doubt may not be exactly the right burden of proof in this case but the point stands that changing how the judges rule would solve more problems than arguing the semantics of the term “generic”.
In the UK, a trademark has to be associated with a specific product category. A business that isn’t Apple Inc., could set up as “Apple T-shirts” or “Apple Foods” or “Apple Taxis”.
You can’t have exclusive use of the name
Rottweiler for selling Rottweilers. However, you could register Rottweiler as a trademark for other goods or services. Where the mark isn’t the generic name for the goods, it’s usually an arbitrary or suggestive mark. Or if it’s a made-up word, it’s called fanciful. Your example DogHead would be a fanciful mark.
In short, the mark is always considered in connection with the goods and services with which it is used.
Well, this case also has a nasty smell because Backcountry.com is, having recently launched a new product, just now is deciding that a bunch of existing businesses encroach on its trademark. (And possibly "picking on" smaller businesses, who are likely to have a much lower level of legal resourcing, but that's not completely clear.)
Trademark defense is one thing if you're proactive about it -- and as I understand it this is even a legal requirement for keeping the mark. Attacking another longstanding business because you've changed your business plan is, well, at least mildly sociopathic.
> If you can't copyright it then you shouldn't be able to trademark it.
Copyrights and trademarks aren't comparable in that way; they cover different things. I can't copyright the word "DogHead" or even the phrase "DogHead Software". I can trademark "DogHead Software," and I can copyright works produced under the DogHead Software brand name.
In fact, you could trademark "Rottweiler," especially if you trademarked in conjunction with another word that made it distinctive, e.g. the actual trademarks I've found for "Rottweiler Recordz" (a recording studio) or "Rottweiler Performance" (a motorcycle parts company). Trademarks have to identify specific uses: there's a trademark pending for "Rottweiler" for use for shoe brushes, and the goods and services claimed cover a variety of cleaning brushes. Even if they get the trademark, it doesn't overlap "Rottweiler Performance," and I could file a separate trademark for "Rottweiler" as a beer company.
With respect to "Backcountry," the biggest arguments against the trademark are (a) that "Backcountry" should be considered a "generic mark" (e.g., you can't name your escalator company "Escalator (tm)", and (b) even if Backcountry isn't sufficiently generic to fail that test, Backcountry.com is making too broad a use claim.
