How To Avoid Legal Trouble From Trademark Infringement When You Buy A Domain Name

So you have a hot idea for a website, or maybe you want to capitalize on a hot new product that has just been released. There are some things that you will want to know first before you get yourself in a lot of hot water.

Choosing a domain name isn't really rocket science but it is very important. You want to choose something that is as short as possible, easy to pronounce and remember for marketing purposes, and if at all possible you want to get your main keywords in the domain name. All that aside, you also have to be careful that you don't step on the toes of a person or company who may be inclined to sue you.

For example, judges have ruled against domain name squatters in every case where they registered a celebrity's name. They will also rule against companies that infringe upon other companies. A good case in point would be the case a couple of years ago between the World Wrestling Federation and the World Wildlife Foundation. The World Wrestling Federation called itself the "WWF", put up a website at wwf.com, and the World Wildlife Foundation filed a trademark infringement suit against them. The Wildlife Foundation won because they had been in existence for many years before the wrestling firm and therefore the World Wrestling Federation had to change its name to World Wrestling Entertainment. Obviously this cost them a great some of money to change their name that appeared on millions of marketing products all over the world as well as the expense they had put up on their website and online marketing.

Another more recent issue that is still ongoing is the battle between Apple and the V.O.I.P. product "iphone" from Cisco. Apple announced they would be bringing a product to market called the Apple iPhone to go along with their other products that start with an "I". Cisco promptly filed for injunctive relief and as of this writing the issue is unresolved.

There are a few basic guidelines that will help keep you out of trouble when you are choosing a domain name so you don't run into legal trouble from violating someone?s trademark. Let's take a look at them.

First off you need to realize that a name that is used to identify a particular service or product is a recognized trademark. Trademarks that are deemed to be suggestive and memorable are granted protection by both state and federal law.

A confliction of trademarks occurs when one trademark is in conflict with another and the deployment of both is probably going to be confusing to customers or would be customers concerning the company's products or services. As I illustrated above, when the legal issue is with a later user of a trademark, the law rules that the first commercial user of the trademark is the legal owner and is therefore given protection. The loser will be forced to cease using the trademark and may even be compelled to pay damages to the original owner, particularly if it is determined that they were malicious in their intent.

The smart thing to do is to consult a trademark lawyer and have them check out your idea for a domain name before you invest too much in developing and marketing it.

Gregg Hall is an author living in Navarre Beach, Florida. Find more about this as well as intellectual property attorneys at http://www.focusonip.com

Use It or Lose It: Guidelines for Proper Trademark Use

Once obtained, trademark rights can last indefinitely. However, in order to protect and maintain these rights, a trademark owner must properly use their mark. It is important to remember that trademark rights are based on use. Thus, failure to use a mark properly or to prevent others from misusing or infringing a mark can result in an owner?s loss of trademark rights. The following guidelines for proper trademark use apply to advertising, correspondence, promotional material, displays, labels, packaging, signs, web sites, and any other media that uses, discusses, or describes the mark.

A. Use Proper Trademark Grammar

The most important rule of grammar regarding proper trademark use is that a trademark should be used as an adjective, not a noun or verb. Using the mark as an adjective helps distinguish the mark from the generic term it modifies. After all, a mark is used to identify the source or brand of a product, not the product itself. It is important to follow this rule to prevent your mark from potentially becoming considered generic. Examples of proper use include: KLEENEX ?tissue; APPLE? computer; and JACUZZI? hot tub. Note that each mark (adjective) is used to modify the generic term (noun). In fact, since trademarks function as adjectives, they should always be accompanied by the correct generic name for the product or service.

Other rules of grammar important to proper trademark use include avoiding the use of a trademark in the plural or possessive form. When referring to more than one trademarked product, do not pluralize the trademark. Instead, use the plural form of the generic product to which you are referring. For example, it would be incorrect to say ?Could you pass me some kleenexes so I can blow my nose?? The correct statement should be ?Could you pass me some KLEENEX? tissues so I can blow my nose?? Likewise, trademarks should not be made possessive. Rather, the generic product name should be made possessive. For example, it is improper to use ?I really like Febreze?s fresh scent.? The correct use of the mark should be ?I really like the Febreze? air freshener?s fresh scent.?

B. Distinguish Your Mark

Trademarks should stand out from surrounding text. This helps to further distinguish the trademark from ordinary descriptive or generic terms. There are numerous ways to present a trademark to make it stand out. A non-exhaustive list of examples includes:

All capitals: VASELINE? petroleum jelly
Initial capitals: Kleenex? tissue
Quotation marks: ?Channellock? ? pliers
Italics: Life Savers? candy
Boldface: Pizza Hut? restaurant
Use of the word ?brand?: Scotch? brand and transparent tape.

C. Identify Your Mark as a Trademark

There are several ways to indicate to the public that you are using your mark as a trademark or service mark. The most common way that trademark owner?s put others on notice that they are using a mark as a trademark or service mark is by using the symbols TM, SM, or ?. The TM symbol is used to identify an unregistered trademark, while the SM symbol is used to identify an unregistered service mark. Use of the TM or SM symbol does not imply that a trademark application has been filed; it simply means that the term is claimed as a trademark. On the other hand, the ? symbol is used to identify a trademark or service mark that has been registered with the U.S. Patent & Trademark Office. Thus, the ? symbol should be used only in connection with a registered mark. Alternatively, there are other proper forms of notice for registered trademarks, including: ?Reg. U.S. Pat. & Tm. Off.? and ?Registered in the U.S. Patent and Trademark Office.?

It should be noted that use of a statutory notice is not required. However, to collect damages and profits in an infringement suit brought under the Lanham Act, statutory notice or the defendant?s actual notice of plaintiff?s registration is required.

D. Be Consistent

Trademarks should be used consistently. Variations on how the mark is presented should be avoided. Failure to use a mark consistently can result in consumer confusion or dilute the distinctiveness of the mark. On the other hand, using a mark the same way every time will enhance the distinctiveness, and thus, the consumer?s recognition of the mark.

Conclusion

The guidelines set forth above are by no means inflexible. However, by following the rules of proper use it will be much less likely that a trademark is used improperly. Furthermore, adhering to these rules is likely to increase consumer awareness that a term is being used as a trademark. Thus, a trademark owner should ensure that their marks are properly used, or else run the risk of losing their rights.

? 2006, Gallagher & Dawsey Co., LPA November 2006

DISCLAIMER

We hope you understand that we cannot possibly give accurate legal advice to all inventors in a brief article on intellectual property issues that should be considered when starting a business. Accordingly, nothing in the above is intended as specific legal advice to any person. Such legal advice can only be given by a qualified practitioner after a careful review of all the individual facts. We urge you to consult us, or another licensed professional, before you proceed.

David Dawsey is an intellectual property attorney with the law firm of Gallagher and Dawsey Co. LPA. David also operates TheTrademarkFirm.com website, which is the online portal for trademark searches and applications. Please visit http://www.TheTrademarkFirm.com. You may learn more about the trademark services offered by Gallagher and Dawsey Co. LPA at http://www.invention-protection.com/ip/practice_areas/trademark.html.