Can your domain (website name) be taking if it "becomes" a trademark?

7 replies
Lets say your start a small business selling things you create to anyone from around the world who wishes to buy your things from your website.

Now you put effort into coming up with a totally new name for your .com, maybe a 5,6 or 7 letter word.

You search and there are NO trademarks for such a name.

You start out on little funds so can not pay a couple of thousand for a world trademark, but 6 months - year down the road you get a letter saying you will have to stop selling under that name because some guy has registered it as a trademark. What do you do??

Plus you can not say you had it FIRST just by having registered a domain name with it prior to them registering it as a trademark. I have heard of posting the word to yourself, but, if the 6 letter word already existed as some guys username on a social network or in some form, then the new trademark owner can just say you are only another one of the guys who had it and has to cease using it due to it now being trademarked?

Are there tips to avoid this or get around it?

Thanks guys for any input.
#domain #taking #trademark #website
  • Profile picture of the author kindsvater
    Here is how this works:

    You register jerryfb.com in 2006. No one has a trademark on the name and you promote football products from your site.

    In 2008 Acme registers a trademark for jerryfb in relation to its frisbee products. Acme cannot take your domain because you are first to use the name. This is so even though Acme has a registered trademark and you do not.

    In 2012 you change jerryfb.com to promote frisbees. Now Acme has a case for trademark infringement and could take your domain in a UDRP action.

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    • Profile picture of the author JerryFB
      Originally Posted by kindsvater View Post

      Here is how this works:

      You register jerryfb.com in 2006. No one has a trademark on the name and you promote football products from your site.

      In 2008 Acme registers a trademark for jerryfb in relation to its frisbee products. Acme cannot take your domain because you are first to use the name. This is so even though Acme has a registered trademark and you do not.

      In 2012 you change jerryfb.com to promote frisbees. Now Acme has a case for trademark infringement and could take your domain in a UDRP action.

      .

      Very well put there, no BS. So could Acme have registered that trademark for selling "football products" (which i would be already selling) and put me out of business if they wanted to, with the power of the trademark.
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      • Profile picture of the author CtrlAltRage
        Originally Posted by JerryFB View Post

        Very well put there, no BS. So could Acme have registered that trademark for selling "football products" (which i would be already selling) and put me out of business if they wanted to, with the power of the trademark.
        That's a question you may want to seek professional counsel on.

        But for what it's worth, I assume if your "football products" are different than the ones they are promoting, they can't really do anything about it.
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      • Profile picture of the author kindsvater
        Originally Posted by JerryFB View Post

        Very well put there, no BS. So could Acme have registered that trademark for selling "football products" (which i would be already selling) and put me out of business if they wanted to, with the power of the trademark.
        No, I was not intending to make that implication. If Acme was selling football products too you still keep your domain because you were using the name first. Registration of a trademark does not trump prior usage by someone else.

        However, the situation just became more messy and complex, and you may need to register and/or take legal action against Acme to have its trademark nullified or to enjoin it from providing services. Or maybe there are primary geographic areas you are both selling in and limited to. Or maybe product offerings within the "football product" niche are limited.

        The purpose of a trademark is to avoid consumer confusion as to who is providing a product or service. Two businesses using the same name to offer the same products to the same market is a problem whether either the businesses agree to the situation, work out an agreement, or face litigation.

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  • Profile picture of the author CtrlAltRage
    Originally Posted by JerryFB View Post

    Lets say your start a small business selling things you create to anyone from around the world who wishes to buy your things from your website.

    Now you put effort into coming up with a totally new name for your .com, maybe a 5,6 or 7 letter word.

    You search and there are NO trademarks for such a name.

    You start out on little funds so can not pay a couple of thousand for a world trademark, but 6 months - year down the road you get a letter saying you will have to stop selling under that name because some guy has registered it as a trademark. What do you do??

    Plus you can not say you had it FIRST just by having registered a domain name with it prior to them registering it as a trademark. I have heard of posting the word to yourself, but, if the 6 letter word already existed as some guys username on a social network or in some form, then the new trademark owner can just say you are only another one of the guys who had it and has to cease using it due to it now being trademarked?

    Are there tips to avoid this or get around it?

    Thanks guys for any input.
    I've been using the handle "Ctrl-Alt-Rage" for 5 years or so. I even registered the url (don't both going there, I took all the info down so it's just a basic template).

    I went on YouTube a month after registering the domain and went to sign up with the same username. Someone had taken it 1 month prior. (Literally almost right after I registered the domain.)

    I contact their support and asked them what I could do, it pretty much came to them saying. "There's nothing we can do, take it up with the user."

    Probably not what you wanted to hear and not exactly what your situation is, but I can imagine the process is the same.
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  • Profile picture of the author tanshi
    Here is an entire list of cases similar to your question, with the decision of the court:

    Domain Name Disputes - Internet Library of Law and Court Decisions
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  • Profile picture of the author gpwilson
    First of all when i am going well and when i am getting good traffic then i would not want to change the name of my site. Secondly if i want to change and face that type of problem then i think i need to start from the beginning. And i think solving this type of dispute in a court would need long time to be solved.
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