Avoid Trademark Infringement When Choosing a Domain Name

[Michael Mayo]

Hi warriors,

I'm sure many of you do this already Right?

You know, Avoid Trademark Infringement When Choosing a Domain Name?

The reason I ask is because Many webmasters erroneously believe that just because their domain name registrar says a particular domain name is 'available' that it truly is. This is not necessarily so. Even if a domain name is physically available, it may not legally be open for use. Why? It's because there might already be a company that has the rights to the keywords used within the domain name.

What a webmaster should do prior is check and see if their chosen domain name resembles any existing trademark that is on the books. They will want to do this before actually investing any money in the domain name. To search existing trademarks, webmasters can visit the website of the U.S. Patent and Trademark Office which is United States Patent and Trademark Office Home Page. From here they can search a database that contains current trademarks as well as those that are pending.

If a domain name is similar to a registered or pending trademark, webmasters need to evaluate whether the domain name is still worth taking.

Usually, if a site is not selling the same types of merchandise or services that the other business is selling and the trademark is not popular, a webmaster probably won't get into legal trouble if they decide to go on and register the domain name.

To be completely sure, webmasters can run the domain name by a trademark attorney. It shouldn't cost too much for an hour consultation.

Of course, if a webmaster would prefer zero percent risk, they can simply try to think of another domain name. When they go about doing this, they need to be more generic and less creative in what they come up with. Using search engine keywords for a domain name is one such strategy. Webmasters can also look into using dictionary terms.

If all else fails they can take a generic term and combine it with a term that is less likely to be taken, such as their first and last name.

Either way, once a suitable domain name has been chosen, webmasters should consider getting it trademarked themselves, especially if they are using it to help brand their business.

With an official trademark, a webmaster has more legal power should another company try to take them to court. And since there's no shortage of domain name bullies, (companies that try to steal profitable domain names from smaller enterprises), a webmaster should use all legal avenues available to protect the rights of their business.

So, Just rember that by checking whether or not a domain name has keywords that are part of a trademark, webmasters lessen the risk that they will have legal problems in the future. If there are problems, and a domain name arbitration proceeding does not rule in a webmaster's favor, they can turn to The Domain Name Rights Coalition.

Have a Great Day!
Michael ...

[Karen Newton]

Hi Michael

Thanks for posting this. I ran into this problem when I purchased a domain name recently (linkity . com) I was thinking it would be a great social networking domain name (link - ity?). Well I did a trademark search and it's trademarked by SimplyFun as a board game.

Trademark Electronic Search System (TESS)

So currently I haven't done anything w/ the domain. If/when I do decide to do something, I'll likely run it by an attorney.

Karen

[Josh Anderson]

The online trademark search system only includes registered (live) or dead trademarks and does not include trademarks submitted for registration which takes a long time to process so there are quite a few.

The smart thing is to do a trademark search online to start... but be aware that in the long term if the name is valuable enough to you you may want to do a more exhaustive search and register the trademark your self.

[Sean A McAlister]

Great Info!

Thanks for sharing...

There are so many things that can be overlooked.

Internet marketers really need to run their business like a business...meaning registering the appropriate paperwork with the state, keeping accurate books (accounting) etc.

these things can all come outa know where and bite you in the butt.

Sean

[UKTim29]

I think it also depends on the country you live in. Eg I live in the UK so I'd need to check if anything is registered as a trademark here.

As far as I know if somethings a trademark in the US it doesn't effect me as I live in the UK therefore go by our law/trademarks etc. I'm not 100% certain but think it's true. It may also depend on whether I want to trade in the UK or worldwide.

[tj]

Originally Posted by UKTim29

I think it also depends on the country you live in. Eg I live in the UK so I'd need to check if anything is registered as a trademark here.

As far as I know if somethings a trademark in the US it doesn't effect me as I live in the UK therefore go by our law/trademarks etc. I'm not 100% certain but think it's true. It may also depend on whether I want to trade in the UK or worldwide.

It effects you also if the trademark is registered as an "International Trademark" within the WIPO.

Timo

[Michael Mayo]

Hi Warriors,

Thanks for all the replies!

I don't want to waste to much of your time so, I'll keep this short.

=========

Karen,
I'm sorry to hear you had experienced this! I hope everything turned out well! Thanks for posting. That had to take some effort on your part! A true sign that you've put into the past and have since moved forward in your life! Great Job!

=========

Josh,
Thanks for adding your knowledge to this thread!
I started to send you an email asking you for your opinion just before I posted it!...Should have went with my gut feeling...

I guess most accept it as "Live and Learn"...lol

=========

Sean,
I couldn't agree with you more!

=========

UkTim,
You have a Good point. I need to realize that I'm not local and I need to be more aware of to whom I am speaking too.

Thanks!

=========

tj,

Yet another Very Good Point! Thanks!

=========

This is exactly why I like discussing things on the Warrior Forum. Each Thread is like it's own little Mini Mastermind Meeting.

Thanks,
Have a Great Day!
Buy Me A...
Michael

[davezan]

Originally Posted by Josh Anderson

The online trademark search system only includes registered (live) or dead trademarks and does not include trademarks submitted for registration which takes a long time to process so there are quite a few.

The smart thing is to do a trademark search online to start... but be aware that in the long term if the name is valuable enough to you you may want to do a more exhaustive search and register the trademark your self.

Take note of this, folks, because registration isn't required for a trademark to
exist. Neither is USPTO, or any online trademark database, the most complete
"all-in-one" source to check for any possible trademarks, although a couple of
lawyers I know consider Google to be a good one to possibly check for such.

UKTim29, you're somewhat correct in the sense that trademarks are country-
specific. A U.S. trademark isn't valid in the U.K., except if there's any kind of
agreements dealing with it, or the Madrid Protocol as a few suggested, or if its
very same holder has a trademark in the U.K. for practically the same thing.

One of my pet peeves is when people say a common word can't be used as a
trademark just because it's "too common" to be used. Well, some people use
Tide to wash their clothes, load up on gas at Shell, or see Caterpillar digging
equipment or so on a road.

One thing you can ask yourself is why you're considering registering a domain
name bearing a term or so used as a trademark. If you're intending to use it to
ride on that mark holder's goodwill or so, more so if commercially at that, then
you can expect trouble, especially if that mark holder happens to aggressively
enforce and protect their trademark rights.

[jensrsa]

Originally Posted by davezan

One of my pet peeves is when people say a common word can't be used as a
trademark just because it's "too common" to be used. Well, some people use
Tide to wash their clothes, load up on gas at Shell, or see Caterpillar digging
equipment or so on a road.

Keep in mind a trademark is just that a mark and often not the name, which is a different issue. The Caterpillar, Shell, Coke, Target trademarks are not for the words but for the image/logo often in combination with the type of product or service. "Coca cola" however is a trademark including the way it is spelled.

The registered company name(s) or trade name(s) is something different.

Caterpillar = Caterpillar Tractor Co.
Coke = Coca Cola Company
Target = The Bullseye Design and Bullseye Dog are trademarks of Target Brands, Inc.
Shell = Shell International Limited

However, I agree that you should do your homework well before dabbling in these grey areas.

Jens

[DeenaEsq]

So, I'm butting in to clear something up that just seemed a little unclear for those of us who are either not attorneys or are not very familiar with trademark law.

The reason that the "common words" that Dave suggested can be used as a trademark is because they are being used in a way that the mark is not "merely descriptive" of the product or service being offered. For example, if you were using the name Shell to market coconut shells, as opposed to gasoline, you'd have a difficult time obtaining the trademark (if you could do it at all). The reason that Apple Computers can trademark "Apple" is because they're using it to sell computers, not apples.

Another point, which I don't believe that I've seen in this thread, that is important is that the same trademarked word can be registered by different people or companies in different classes of goods or services (e.g., Apple Computers and Apple Records). So, if Karen wants to use linkity.com for an online social network and Hasbro (or whomever) has it trademarked as a board game, it shouldn't be a problem for her to do so. You have to look at the likelihood of confusion. Is anyone looking at Karen's social networking site going to think that it's run by the same company who owns the board game? I'd say no.

Deena
__________________________________________________ __________

Any opinions are offered without knowledge of the specific law of your jurisdiction and with only the limited information provided in your post. No advice given here should be reasonably relied upon by you or any third party without consulting an attorney who is aware of all of the facts and law surrounding your situation. Any advice given here is not intended to create an attorney-client relationship in any way.

[jensrsa]

Deena, maybe we should all add disclaimers to all our posts with all the advice and opinions flying around on the forum.

Originally Posted by DeenaEsq

if you were using the name Shell to market coconut shells, as opposed to gasoline, you'd have a difficult time obtaining the trademark (if you could do it at all).

Using the word Shell with a coconut logo shouldn't be a problem as a trademark but if you sold coconut oil and tried to register the name Shell Oil (assuming it's not registered already) or use a yellow scallop shell in your logo you probably would have a problem.

Speaking from personal experience the large companies often use their cease and desist demands as a scare tactic on the assumption that us small guys don't know enough, can't afford the legal costs, will get scared and run for the hills at the sight of a lawyer's letter.

In the end it is probably easier to steer clear of anything that smacks of trademark infringement - there are enough variations of names and phrases available not to take on unnecessay legal hassles as well.

Jens

[DeenaEsq]

Originally Posted by jensrsa

Deena, maybe we should all add disclaimers to all our posts with all the advice and opinions flying around on the forum.

I'm often surprised that more people (especially attorneys on forums) don't, to tell you the truth...