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Is This a Trademark Issue or Not?

by IMDealBox
17 replies
Hello all.

I hope you can help me with this "problem".

I bought a domain name that is close to a term that is trademarked. Let me explain.

The trademark term is (example): Gringe and the domain name i bought would be: Gringer.

The only difference between the TM term and and my domain is letter R. My domain name has the letter R at the end (sounds like: informeR).

The TM term describes a trend or a movement of some sort.
My domain sounds like something that is bringing news about the said trend or movement.

Also this trademarked term is a totally made up word.

Would be great if you could help...but i think i only confused you more! :confused:
#issue #trademark
  • Profile picture of the author Self Promotion
    If the businesses are different then you have nothing to worry about.
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    • Profile picture of the author IMDealBox
      Originally Posted by Self Promotion View Post

      If the businesses are different then you have nothing to worry about.
      What do you mean by that?

      The trademarked term describes a specific category of people.

      On my domain I plan to put info and stuff relevant to HUMAN MALES (they are a part of that category ... )
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      • Profile picture of the author Self Promotion
        Originally Posted by IMDealBox View Post

        What do you mean by that?

        The trademarked term describes a specific category of people.

        On my domain I plan to put info and stuff relevant to HUMAN MALES (they are a part of that category ... )
        If the content is similar than an argument can be made that it is trademark infringement. It's not worth the risk. Find another name.
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        • Profile picture of the author SunilTanna
          If the word has been made up by the trademark holder, or you are using it to describe people using the holder's service, etc., then there's a good chance you're heading for trouble. The more famous the name, and the more unique the name, the more likely is trouble,

          I think it would be a fact specific enquiry, so it's hard to discuss a general argument about similar sort of names like your example. I wouldn't accept anyone's bland assurances saying " oh there won't be an issue".

          Put it this way, I wouldn't rate your chances of a trouble free life, if you say owned exxoner.com, especially if you used it to describe people or some activity related to exxon the company.

          Ianal of course.

          Fwiw the issue isn't just about law though. A lawyer could tell you if you have a defensible position in case of a lawsuit or udrp - but what you also need to consider is whether you want to risk getting into a dispute at all - even winning a case, is probably no fun (to put it mildly).
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          • Profile picture of the author Alexa Smith
            Banned
            Originally Posted by SunilTanna View Post

            If the word has been made up by the trademark holder, or you are using it to describe people using the holder's service, etc., then there's a good chance you're heading for trouble.
            This.

            If you're using it in the same context as the trademark owner, it's probably going to be bad news. I'm no lawyer, and that's a guess.

            These things can be complicated, but if your domain-name includes the trademarked word and the general context is the same or pretty similar, the trademark owner may feel obliged to take action to protect their rights, because trademarks effectively confer obligations as well as rights on their owners (if it can be shown, at renewal application time, that they've knowingly failed to act over a breach of their trademark, that can be held against them, and this reality prompts some trademark owners to take legal action even if they don't really care much about the specific breach of their trademark which arose). Which is why a proper legal opinion is what you need, and this forum's a bad place to seek or to take legal advice, because in reality what you end up with are opinions from people like me who aren't lawyers and may have it wrong, however "helpfully" motivated we are in posting: http://www.warriorforum.com/main-int...al-advice.html

            Originally Posted by SunilTanna View Post

            what you also need to consider is whether you want to risk getting into a dispute at all - even winning a case, is probably no fun (to put it mildly).
            This, too.

            It's not just about "who's in the right and who's in the wrong": it's about the practicalities of whether you really want/need to have the entire dispute that may lie ahead, in the first place.
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  • Profile picture of the author Venturetothetop
    You answered the question,

    You copied a website name that is clearly made up and you will base your content on said websites content.... you clearly aim to benefit/make money from another persons trademark.

    Why is that hard to understand?

    If you piggybacked off my hard work - I'd sue the crap out of you.
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    • Profile picture of the author tbochi
      This is not how you should think. The way to think is like this. Is the company going to aggressively defend their trademark? or not. If not then you have no problem and you can go ahead with your plans.
      If on the other hand you are correct but the company is going to go after you and they have deep pockets, it is going to cost you plenty to defend it.
      Now the context of the question is different, is it worth it. You can only decide. It can be long drawn and expensive even you are right.

      My comment does not even consider which context you are using the name. It could be same or non related the above applies.
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    • Profile picture of the author IMDealBox
      Originally Posted by Venturetothetop View Post

      You answered the question,

      You copied a website name that is clearly made up and you will base your content on said websites content.... you clearly aim to benefit/make money from another persons trademark.

      Why is that hard to understand?

      If you piggybacked off my hard work - I'd sue the crap out of you.
      Didn't do that!

      They have a WORD trademarked. I added a letter and bought a domain name. They dont have a domain name for that term as they dont intend to monetize it or use it as a brand.
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      • Profile picture of the author davezan
        Originally Posted by IMDealBox View Post

        Didn't do that!

        They have a WORD trademarked. I added a letter and bought a domain name. They dont have a domain name for that term as they dont intend to monetize it or use it as a brand.
        There are decisions where adding a letter or word doesn't get around trademark
        confusion or infringement.

        Trademarks aim to prevent confusion. The more unique and popular the mark, as
        mentioned earlier, the more likely people will confuse anything bearing the mark
        with its actual holder or source.

        You may have a (very slim) chance if your use is non-commercial commentary or
        news. Of course, non-commercial means you can't make money out of that.

        Unless you somehow secure permission from the trademark holder, what you plan
        to do is risky from the start. (Then again, what's life without a little risk?)
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      • Profile picture of the author An Al
        Originally Posted by IMDealBox View Post

        Didn't do that!

        They have a WORD trademarked. I added a letter and bought a domain name. They dont have a domain name for that term as they dont intend to monetize it or use it as a brand.
        Why did you choose the name you chose?
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  • Profile picture of the author Danielle Murphyx
    Banned
    As far as I know, you need to have at least two letters differing from that other term. But I am not a lawyer or something, it's something I remember from law classes in college
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    • Profile picture of the author Steve B
      IMDealBox,
      1. This is a public forum. Anyone can give you an opinion. Don't base key business or financial decisions on the advice given here.
      2. Why flirt with potential danger? Find a different name.
      3. If you absolutely can't do without the domain you've chosen, pay for competent professional legal advice to see where you stand.
      Steve
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  • Profile picture of the author JanePlaten
    Banned
    I do not think this is a problem. You might get some of their traffic when people misspell your website name, and vice-versa. This would not be a first. Pay attention not to have any similar content and you are safe.
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  • Profile picture of the author Roboseum
    Too similar to the original. Even if it goes to court and you win would it be worth it? There are so many great short names out there without this issue.
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    • Profile picture of the author Kay King
      Of course it is a trademark issue - and those telling you "it's not a problem" won't show up in court to defend you.

      If you are set on a name that you KNOW could be a problem - get advice from a trademark attorney - there are a lot of those law firms for good reason.

      There are all sorts of ins and outs in trademark law - but you are asking if you can tack on one letter of the alphabet to a trademarked term and be safe. If you could do that without consequences - what would be the point of trademark in the first place?
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  • Profile picture of the author IMDealBox
    Thx for all the replies!

    Yes i know this is a public forum...but you never know whom you can bump into..right?

    I never just do what others tell me...i already had an opinion about this issue...i just needed to hear other people's words!

    A person that knows SOME law..after explaining him what the word is and how this company used that word and what my domain is about...said that there are about 25% chances to get legal action against me.

    I've chosen the domain name because i liked it.

    Since i am not in USA, all they can do to me is a C&D order for the hosting of the website. So lots of time and effort would be lost.

    Thx again for the replies... And to make things clear read this below:

    "trademarks identify goods or services. A trade name isn’t a product name. You are allowed to have a corporate name - even a domain name - that’s similar or identical to someone else’s product name as long as you’re not using it in a trademark sense."

    and

    "...companies were doing business in separate channels of commerce"

    My take on that: if i decide to pursue this...not much to be afraid of...

    Master Yoda

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  • Profile picture of the author Moneymaker2012
    As long as the nature business is same on both domains it's going to bother you soon. That's why they have put trademarks.
    you should make it look little more different to the one you are talking about.
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