I DONT WANNA GET SUED... HELP (Trademark Infringement)

28 replies
If I wanted to register a domain name or start a company using a popular name, what draws the line?

Some examples:

AmazonPowerEquipment.com could be infringement on Amazon.com
BlueBerry could be infringement on BlackBerry
Taco King could be infringement on Burger King
Apple Sunglasses could be infringement on Apple Computers

So what do you think draws the line? These are common names in the english language, can I register stuff like this without getting sued!?!?
#infringement #sued #trademark #wanna
  • Profile picture of the author Rob Whisonant
    If it is trademarked and you are going to promote a product or anything that could be confused with the trademark holders site... Don't add it to a domain name. It's that simple.

    Re's
    Rob Whisonant
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    • Profile picture of the author Peter Clark
      Originally Posted by Rob Whisonant View Post

      If it is trademarked and you are going to promote a product or anything that could be confused with the trademark holders site... Don't add it to a domain name. It's that simple.

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      Rob Whisonant
      This x1,000

      /Thread.
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    • Profile picture of the author Scott Rankin
      Originally Posted by Rob Whisonant View Post

      If it is trademarked and you are going to promote a product or anything that could be confused with the trademark holders site... Don't add it to a domain name. It's that simple.

      Re's
      Rob Whisonant
      Can't I trademark AmazonPowerEquipment and then have the right to register it's domain name, AmazonPowerEquipment.com?
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      • Profile picture of the author Karan Goel
        Originally Posted by Scott Rankin View Post

        Can't I trademark AmazonPowerEquipment and then have the right to register it's domain name, AmazonPowerEquipment.com?
        I think for that you have to check out
        with Amazon for usage of name.

        If they prevent the use, then you can
        NOT trademark AmazonPowerEquipment.

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        • Profile picture of the author MerlynSanchez
          If you really want to avoid getting sued then your best bet is to get expert advice and not depend on anything you read on the forum unless it's by a legal professional.

          And even then, it needs to be specific to your situation.

          There's at least one attorney who's a WF member, his name is Brian and his user name is kindsvater.

          Good luck!
          Merlyn
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      • Profile picture of the author Karen Barr
        Originally Posted by Scott Rankin View Post

        Can't I trademark AmazonPowerEquipment and then have the right to register it's domain name, AmazonPowerEquipment.com?
        Yes.

        The key factor in any legal action would be, is a reasonable person likely to confuse the two companies? Have you designed your logo or website in a way that's likely to cause some confusion or be taken as "passing off" your company in order to trade on the other company's good name? is there any similarity in the two industries, for example having a company called Amazon which sold books or games online would be a problem, but selling something unrelated shouldn't be an issue.

        Be aware that some companies will try to sue anything that moves even when the industries are dissimilar and the company logos have no similarity, reference Apple Computers vs Apple Records some years ago. The action was defeated, but you have to ask yourself if you have the resources to fight that kind of action.
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  • Profile picture of the author Fernando Veloso
    Originally Posted by Scott Rankin View Post

    If I wanted to register a domain name or start a company using a popular name, what draws the line?

    Some examples:

    AmazonPowerEquipment.com could be infringement on Amazon.com
    BlueBerry could be infringement on BlackBerry
    Taco King could be infringement on Burger King
    Apple Sunglasses could be infringement on Apple Computers

    So what do you think draws the line? These are common names in the english language, can I register stuff like this without getting sued!?!?
    Money. And time. If you have both you can fight in court for years.

    J/K

    Rob said it all. If it's trademark (with all the not so explained implications...) you better use something very DISTANT from those names/brands:

    Amazon - colcapitra
    BlackBerry - hunipati

    etc etc

    The longer the probability of these companies harassing you, the better.
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  • Profile picture of the author Karan Goel
    EDIT:

    From Amazon.com Help: Conditions of Use

    AMAZON, AMAZON.COM, AMAZON.COM & Design, ......... and other Amazon.com graphics, logos, page headers, button icons, scripts, and service names are trademarks, registered trademarks or trade dress of Amazon in the U.S. and/or other countries. Amazon's trademarks and trade dress may not be used in connection with any product or service that is not Amazon's, in any manner that is likely to cause confusion among customers, or in any manner that disparages or discredits Amazon. All other trademarks not owned by Amazon that appear on this site are the property of their respective owners, who may or may not be affiliated with, connected to, or sponsored by Amazon.
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  • Profile picture of the author Dmaind
    It is not going to create a problem for sure like Rob Whisonant mentioned earlier you will only get in trouble if you provide similar services as Amazon. Also, you have to grow BIGGG to get noticed by Amazon to take action and invest/waste their attorney fees on.
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    • Profile picture of the author Gail_Curran
      Or you could just avoid the problem altogether by registering a domain that can't possibly be construed as infringement, eg. BestPowerEquipment .com. Then you can devote your energy to building a business instead of worrying about how to get around trademark issues.
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  • Profile picture of the author bamidele_ba
    To be sincere I really don't can be trademarked with Blackberry as it is the name of a fruit. The same thing goes for all the other ideas - I think what matters most is you not using any property of those popular trademarks that might suggest you're trying to infringe on their trademarks.
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  • Profile picture of the author sbucciarel
    Banned
    Companies who trademark a name, trademark it in the category that their services fall under. If your category is not even remotely similar to the category that they file under, as in a couple of your examples, you might not run into problems.

    Use TESS to start your research on trademarked names and their filing category.
    http://tess2.uspto.gov/

    Disclaimer: Take this with a grain of salt. You really need a lawyer to answer this type of question.
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    • Profile picture of the author Fernando Veloso
      Suzanne

      From past experiences, I know there are some tweaks and tricks in all that process.

      Example: You cannot register "blackberry peaches" in a totally unrelated category - cause it's using the trademark. Same thing for "nike carrots". Even if you try to use this in "vegetables", Nike will eat you alive.

      More: brands usually protect their trademark in a vast array of categories. Especially BIG brands. But since we're not legal advisers, as you said so well:

      Disclaimer: Take this with a grain of salt. You really need a lawyer to answer this type of question.
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    • Profile picture of the author Kay King
      If you end up in court it won't help to point out "what the other guy gets by with" and there's no protection in saying "on the forum they said it was OK".
      The domain name you use as an example isn't online so either it's not real or it's been taken down.

      If you want a legal opinion, talk to a lawyer. If you want to risk it - that's your choice.

      kay
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  • Profile picture of the author retsek
    we risk it everyday with our grey hat techniques. (Any link building or SEO is NOT whitehat) Google could slap at any time. Why not take the risk and use the domainname if it's available.
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  • Profile picture of the author max5ty
    You are way over thinking things - depending on how far you want to take your analysis, just about every name you come up with, could somehow infringe on another.

    Sounds like a case of analysis paralysis.
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    • Profile picture of the author sbucciarel
      Banned
      Originally Posted by retsek View Post

      we risk it everyday with our grey hat techniques. (Any link building or SEO is NOT whitehat) Google could slap at any time. Why not take the risk and use the domainname if it's available.
      Originally Posted by max5ty View Post

      You are way over thinking things - depending on how far you want to take your analysis, just about every name you come up with, could somehow infringe on another.

      Sounds like a case of analysis paralysis.
      ^^^^^^^^^^^^^^^^
      This kind of advice could cost you a fortune. Your money.
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      • Profile picture of the author max5ty
        Originally Posted by sbucciarel View Post

        ^^^^^^^^^^^^^^^^
        This kind of advice could cost you a fortune. Your money.
        I appreciate your feedback young lady, but actually my way of thinking has made me a fortune.

        I'm not implying that anyone should break the law, I'm simply trying to explain that often times we tend to over think an idea to the point of giving up.

        No matter what idea you have, there is always going to be someone who will stand on the sidelines and hurl arrows (case in point the comment I'm referring to).
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        • Profile picture of the author sbucciarel
          Banned
          Originally Posted by max5ty View Post

          I appreciate your feedback young lady, but actually my way of thinking has made me a fortune. I'm proud to say I'm semi-retired at 48, not that it's important, just simply saying, I know of what I speak about.

          I'm not implying that anyone should break the law, I'm simply trying to explain that often times we tend to over think an idea to the point of giving up.

          No matter what idea you have, there is always going to be someone who will stand on the sidelines and hurl arrows (case in point the comment I'm referring to).
          It's unimportant to me how much money you have made by violating trademark laws and slipping through. A lot of people don't slip through and advising people on a forum to break trademark law just because you do, is the wrong thing to do. I know what I speak about as well and have studied the outcomes of many trademark violation cases.
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          • Profile picture of the author Sardent
            The big questions, that I don't think anyone has asked, is WHY?

            Why do you want to register a domain with someone else's trademark in it?

            If it's just to ride their popularity...pay your dues. Create your brand and promote it.

            If it's because you're selling their stuff, or are an affiliate, play that up on your landing page and in your advertising instead.
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          • Profile picture of the author max5ty
            Originally Posted by sbucciarel View Post

            It's unimportant to me how much money you have made by violating trademark laws and slipping through. A lot of people don't slip through and advising people on a forum to break trademark law just because you do, is the wrong thing to do. I know what I speak about as well and have studied the outcomes of many trademark violation cases.
            You missed all the points of my post.

            Have a nice day.
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      • Profile picture of the author Dan C. Rinnert
        There is a Champion Window company. Champion Spark Plug too. I think there's a Champion apparel company as well. Probably many others.

        They can do that because they are in different industries. No one is likely to go to Champion Spark Plug to get windows.

        Likewise, as someone else mentioned, there is Apple Inc. (formerly Apple Computer, Inc.) and Apple Records. There is also an Apple Vacations and probably other various companies.

        Similarly, they can get away with that because they are in different industries. Note that Apple Records sued Apple Computer when Apple released Macs that played musical sounds. Those that had an older Mac may remember the Sosumi sound that Apple later added to their systems.

        They sued because they felt Apple, by adding "music", was infringing on their trademark. I believe they later settled.

        At any rate, that underscores the point that trademarks can be restricted to certain industries and different companies can use the same word/name as a trademark in different industries.

        A big issue is the likelihood to confuse people. Trademarks are meant to identify brands. You put your brand on a product because you want people to recognize it as yours. And buyers want to be sure that they are getting the brand they know and trust. Thus, it's important that trademarks not be confusingly similar.

        As I mentioned earlier, people are unlikely to confuse Champion Window with Champion Spark Plug. However, some brands become so recognized that using them in different niches would be confusing. For example, Xerox is a well-known brand. But, if someone came along and tried to start the Xerox Bar & Grill, there's a good chance that people will think Xerox is opening restaurants now. They may be scratching their heads, but they will still associate the Xerox brand with, well, Xerox.

        There aren't a lot of brands like that, but they are out there. A rough way to check is to ask people what they think of when you mention a brand. You say "apple" to 100 people, and some will think of the fruit, some will think of computers, some will think of vacations and Paul McCartney will think of Apple Records. But, say "xerox" to 100 people, and almost all of them will think of Xerox.

        As far as something like AmazonPowerEquipment.com goes, if you are setting up a site to promote power equipment from Amazon.com as an affiliate, that name is not going to fly. You are infringing on Amazon's trademark there. Now, if you're starting your own line of power equipment, then you might be able to use AmazonPowerEquipment.com. But, as others mentioned, you'll want to talk to a lawyer about that one.

        As for Blueberry, well, if you're trying to create a Blueberry smartphone, that is confusingly similar to Blackberry and likely going to be a problem. On the other hand, you could sell Blueberry Sunglasses, assuming no one else already has that trademark.

        Taco King? I don't know if people would confuse that with Burger King. Maybe Taco Bell, but I doubt Taco Bell has a trademark on Taco apart from using it in conjunction with Bell. You would, however, very likely get in trouble with King Taco, because Taco King would be confusingly similar to King Taco.

        Apple Sunglasses could potentially be fine, assuming no one else already uses it. I don't think that people looking for a computer or an iPad are going to see Apple Sunglasses and think, hey, I wonder if they sell computers?

        If you want to use a popular word in a business name, do a trademark search as others suggested. If the name is in use by a highly well-known brand, you might do better to avoid using it (cheapest way) or review it with a lawyer before using it.

        Mind you, too, that even if you are in the right, some companies are sue-happy and could sue you anyway. You might win, but it may cost you an arm and a leg to get that win. It seems to me there was a guy years ago that had [genericword].com and was sued by [genericword]shoes.com because they wanted his domain and argued it was confusingly similar to their trademark. As I recall, they lost and he kept his domain, but at what cost, I do not recall.

        At any rate, try to avoid using something already in use and well-known. Or talk to an attorney before using a "risky" name.

        Also, I am not a lawyer, so don't take any of this as legal advice and consult with an attorney before acting on any information in this post.
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        • Profile picture of the author ExRat
          Hi max5ty,

          No matter what idea you have, there is always going to be someone who will stand on the sidelines and hurl arrows (case in point the comment I'm referring to).
          It's illogical and extremely fuzzy thinking to suggest that someone who offers advice designed to help another avoid potential (and pretty much pointless) trouble for no benefit to themselves is 'hurling arrows.'

          By using that phrase yourself along with your claims of superiority, you frame your response as an emotional one, that has a 'hurled arrow' feel about it itself.
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          Roger Davis

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        • Profile picture of the author yourreviewer
          Originally Posted by Dan C. Rinnert View Post

          Also, I am not a lawyer, so don't take any of this as legal advice and consult with an attorney before acting on any information in this post.
          You say this but it is incredible how much you know about the law. Awesome dude, how did you ever get to know so much legal stuff?
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    • Profile picture of the author ExRat
      Hi Scott,

      I DONT WANNA GET SUED... HELP (Trademark Infringement)
      Please don't shout (use CAPS) in your thread titles. It's not allowed and encourages others. Your needs are not any more important than anyone elses, even though they might seem so to you.

      Also, the wording of your request is deceptive, it implies that you desperately need assistance because you are being sued for trademark infringement, when in fact it's just another question that doesn't have any urgency to it at all as far as I can see.

      Using both of these tactics to get attention is actually self-defeating and counter-productive.

      Thankyou.
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      Roger Davis

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  • Profile picture of the author mattzyx
    i did the same mistake before too. i used sonyelectronics. but before i got into trouble, i deleted the blog.
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  • Profile picture of the author wordydiva
    If you are seriously concerned it might be better to avoid using any name that you even remotely think could infringe on an existing trademark. Why waste the time building something up only to lose it the minute you've gotten comfortable. If you are really determined to give it a try go see a lawyer with trademark/business experience. Even with a lawyer you might end up in trouble, but it would probably be better than relying on information you read on the internet...
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  • Profile picture of the author omk
    You know what may sound silly, but actually works. If you come up with a domain name and u get a funny feeling in your gut. That tells you that there's something wrong with that domain name and you're probably right.

    In real life you'll probably be able to register a good amount of infringing domains and never hear anything from the company that has the rights. That is until you start making money or surge up in the search engine listings. Then you'll probably get tapped on the shoulder.

    I would stay clear of names that will clearly be a problem and just get legal advice on those that you are unsure of.

    Of course, you aren't going to waste any money getting legal advice on a site that you plan to use for a short period of time, then dump.
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