What's in a Name?

After posting the domain KonaDiscounts.com to the NamePros.com "Reg of the Day" thread, the question of possible trademark infringement was raised in relation to the word, "Kona."

My reply:

If you go to the USPTO website, you'll see the following marks registered relating to the word, "Kona":

KONA
KONA GOLD
KONA BUZZ
KONA GREEN
KONA ROASTING COMPANY
KONA COAST CHOPPERS
KONA WIND
KONA RED
CUP O'KONA

Each of these separate entities is allowed to use the word "Kona" because the mark can be registered for a wide and diverse number of classifications representing different products and services - none of which compete directly with the other.

Additionally, "Kona" is what the western geographic coastal area of the Big Island of Hawaii is referred to. It is no more a violation of trademark law to use "Kona" than it would be to use "Los Angeles" if a business called "Los Angeles Sports" had been registered as a trademark.

Of course, if I used "Kona Red" as a domain name to sell cosmetics, that would not be very wise:

"KONA RED
Goods and Services IC 003. US 001 004 006 050 051 052. G & S: Cosmetics; body and beauty care cosmetics; skin care products, namely, skin lotions, skin creams; whole coffee fruit sold as component ingredients of cosmetics and non-medicated beauty and skin care preparations"

However, if I opened up a nightclub called, "Kona Red", that's not going to be a problem. Not unless another business had previously registered the mark for a class of goods or services that included restaurants and bars.

If the mark is deemed "famous" then third parties will be unable to use it for any other class of goods or services - even if it is non competing. That's why there is no car wash that goes by the name of "Disneyland" and "Pepsi" is never seen as a brand name for a company that manufactures residential siding.

For the most part, dictionary and geo domains are going to fall into a generic, descriptive category, so that's not likely to be an issue. Nonetheless, I'd have to say that third party, unaffiliated registrations of "pure" geo domains (particularly of the dot com variety) may give rise to potential legal trouble if the governmental entity or municipality (from which the dot com domain derives all of its value) decides that its claim to such domain name supercedes all other takers. But that is an altogether different discussion for another post.

Finally, despite what else you may have heard, when a generic descriptive name is used for a non descriptive purpose, it can be registered with the USPTO. So, if I start a bicycle company and decide to call it, "PIZZA" that's a name that can be registered as an exclusive trademark for the category that includes bicycles. But if you're selling round, flat bread with cheese, sausage, and red sauce, no such exclusivity in the mark "PIZZA" will be allowed. As if that's not confusing enough, sometimes it has to do with state of mind which can be inferred from the post-registration actions taken by a domain owner. If you wake up one morning to discover that some way, some how, the domain name Sting.com was deleted only moments before (and, of course, you grab it for less than the price of a carton of smokes) and immediately post to this thread about the "freaking" incredible sum of money you're going to make selling it to the rock star who had the poor fortune of having let it lapse, then you will be in for a rude awakening when you are dragged before a UDRP panel that, without hesitaion, returns the name to it's previous owner. Had you only been a genuine, aspiring entomologist with a penchant (and website plan) for bee allergies, life might have been so much different! That's why, when GarryTrudeau.com dropped, I defensively registered it (on his behalf) and immediately redirected the name to the official Doonesbury website. When his organization is ready, domain ownership will be transferred to Mr. Trudeau at no cost. Doing the right thing is sometimes the best long term play.

So registering KonaDiscounts.com for the purpose of offering reduced prices on products and services made available in the western coastal region of the Big Island is not going to be an infringing use.

This information is not offered as legal advice, but is merely a summation of the issues and potential liabilities associated with the registration of domain names. Contact a trademark attorney for your specific circumstances. Do not rely on the content of this post.