Howdy guys:
This post should be of special interest to webmasters and website owners that use "Jehovah's Witnesses" or any similar term as part of their identity.
Background:
Late last year when the WTS was successful in coercing Peter Mosier (Quotes website) into entering into a settlement agreement in lieu of costly litigation, I became concerned about the following clause contained in that agreement:
5.
Mosier agrees and undertakes that as of the Effective Date he shall not, directly or indirectly, use, register or control any other domain name that includes or comprises, or that is a variant of, or is confusingly similar to, the WATCH TOWER, WATCHTOWER, AWAKE, and JEHOVAH'S WlTNESSES trade marks, or any othertrade mark, trade name or domain name owned by Watch Tower from time to time.
As an owner of at least one website that uses the term "Jehovah's Witnesses" as part of the main URL/Domain name, I was especially concerned about the WTS's claim to trademark "Jehovah's Witnesses" which I believed to be a generic and purely descriptive term. My major concern was that having recognized some success in this tactic against Peter in Canada, that the WTS might turn its attention to other websites that contain the term Jehovah's Witnesses or any near variation and assert a trademark claim in other jurisdictions.
My experiment:
After verifying that no such trademark was held here in the U.S. for "Jehovah's Witnesses," I opened up a claim of my own. You can find it here: www.uspto.gov (go to Trademark search and do a search for "Jehovah's Witnesses" and it will pull up my filing.) (PS: You can ignore that it says I own it :-)
Today, as I expected I would, I received a (preliminary) denial of the application, with the examiner giving among the reasons the fact that the term is considered under U.S. law as merely descriptive. (Technically, I can appeal the determination but my point is proven so I don't intend to press the claim.)
Result/Upshot:
The bottom line of my experiment is that it is my opinion and apparently the case that all websites which are using the term "Jehovah's Witnesses" as a domain name or within their sites have nothing to fear regarding a trademark infringement claim by the WTS despite what is stated in the Mosier Settlement.
It is now a certainty, to me and apparently the USPTO by virtue of what is stated to me in the preliminary denial, that the term "Jehovah's Witnesses" is not a valid mark and is a purely descriptive term.
Of course, PLEASE NOTE, the Quotes website did have significant copyright infringement (including commercial exploitation of copyrighted materials) and any websites (owners) that are not acting within the doctrines of fair use or fair comment or whatever similar exceptions apply in their land may be subject to valid copyright and trademark infringement claims. (So play within the rules guys and you should be fine.)
Also note that it is of course possible that the WTS could make (likely invalid) claims with ICANN or whatever other bodies as far as a basic domain name dispute goes.
If you have any questions please feel free to pm me.
-Eduardo