I started a company that offers an online service for profit. After branding the business registering a domain and building a website, I found a web presence offering similar services offline with a trademarked name similar to mine. For example, my website has a name like Widgets Gadgets Web and a domain name like widgetsgadgetsweb.com. The trademarked name would be like WidgetsGadgets (one word), but the two word version is a very common term that is not trademarked. I registered the domain based on knowledge of the common term, with no knowledge of the pre-existing trademark. I have already invested quite a bit in branding pr materials before discovering this potential show stopper. Am I in violation of US trademark law?
Is using a business name or domain similar to a trademarked name infringement?
I started a company that offers an online service for profit. After branding the business registering a domain and building a website, I found a web presence offering similar services offline with a trademarked name similar to mine. For example, my website has a name like Widgets Gadgets Web and a domain name like widgetsgadgetsweb.com. The trademarked name would be like WidgetsGadgets (one word), but the two word version is a very common term that is not trademarked. I registered the domain based on knowledge of the common term, with no knowledge of the pre-existing trademark. I have already invested quite a bit in branding pr materials before discovering this potential show stopper. Am I in violation of US trademark law?
3 Responses
June 18th, 2009 at 6:50 pm
I seem to remember a guy named Mike Rowe starting a website called mikerowesoft.com and I think he was pummeled with civil suits. In such a case it really wouldn’t matter whether it is legal or not since Microsoft had money to just keep after him. You should probably talk to a trademark attorney or trademark office.
June 20th, 2009 at 7:01 pm
Hello,
There is a such thing as trademark violation cybersquatting. However, it depends on several factors. If it has a different name/look than your site, then you will probably be in the clear.
Usually, as long as you aren’t using the person’s good name to try profit yourself, then it isn’t considered trademark infringement. It just depends on how closely your site looks to the other site, and how similar the names are.
June 24th, 2009 at 6:36 am
…..The use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent.
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But the problem for you the most is that, it may reduce your business too, because of them.
You should have considered:
8 Quick Tips to Choosing a Domain Name
Your domain name is the center of your Internet identity. So what type of things should you take into consideration when choosing the name that will represent you on the Web?
1. Keep it short
Although some places allow you to register a name with up to 63 characters, you have to keep in mind that people need to be able to remember it, and easily type it into their browser. Try to register the shortest name that your customers and visitors will associate with your Website. The general rule of thumb is, keep it under seven characters if possible. (Not including the suffix.)
2. Dot What?
There are many different extensions available right now. For businesses, we recommend a .com suffix. It is the first extension that most people try when searching for a Website. Also, since it is one of the oldest extensions, .com shows that your business has been around for a while and that you have a well-established presence on the Web.
3. Avoid Trademarked Names
There are two really good reasons for this. First, it’s not very nice. We have all heard the stories about the zany guy who thought ahead and bought some-huge-multi-million-dollar-company.com and sold it to the company for enough money to retire on. But, remember that those companies, like yours, have spent lots of time and money creating their brand, and what goes around comes around. Also, companies are no longer opening their pocketbooks to get their names back. They are calling their lawyers.
4. Register Your Domain NOW
Domain names are being snatched up faster than candy at the St. Patrick’s Day parade. You must register soon unless you want to get stuck with the-domain-name-that-no-one-wanted.net. You do not have to have a Webmaster or an ecommerce department or a Web design consultant or… Heck, you don’t even need a Web page. Just get out there and register before you loose the opportunity to get the name you really want.
5. One May Not Be Enough
Sometimes, it isn’t a bad idea to register several similar domain names. If you have yourname.com, register yourname.net so no one else takes it. You can register your full company name and a shorter, easier to remember version. Some people even register common misspellings of their company’s name. (You don’t need a separate Web page for each. Several domains can point to the same Website.)
6. Character Types
Just a reminder. Domain names can only use letters, numbers, and dashes. Spaces and symbols are not allowed. Also, domain names are not case sensitive.
7. Ask Around
When you have settled on several available name choices, see what your friends and clients have to say. A name that may make perfect sense to you may be too hard for other people to remember. Is your domain easy to say? Is it hard to spell? Do you have to explain why you chose the name?
8. Don’t Shell Out Large Amounts of $$$
At one time, companies were able to get away with charging reservation fees plus a mandatory $70 InterNIC fee. Recently, it was decided that other companies should be able to compete to sell domain names. This has lowered prices dramatically.
And remember, if you think that if you have found the right domain name, but you’re not quite sure if it’s the one… register it anyway before someone else does!
Vera Chandler.