Avoiding Domain Name Trademark Infringement

Choosing a name for your business and a domain name for your website can be difficult in and of itself. Once you've settled on a name however, you still need to do one more very important thing. To ensure that your chosen name doesn't infringe on anyone else's existing trademark, you or your attorney needs to perform an exhaustive search of existing trademarks to make sure that no one has claimed your name or a similar name that might cause confusion.

Choosing a Domain Name that Doesn't Infringe

In order to understand to choose a domain name that doesn't infringe on another's trademark, it's necessary to understand the basics of how a trademark works.

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.
• Trademarks legally conflict with each other if the use of one trademark causes confusion as to the product or service being offered, or as to the source of the products or services being offered.
• Whoever used the trademark first owns it, and any subsequent users who cause confusion as to the products or their source will be forced to stop using the mark and may have to pay the trademark owner damages.

Thus, when choosing a domain name that doesn't infringe on anyone else's trademark, you need to choose a word, phrase, symbol or design (or combination of these) that identifies your products and won't confuse potential customers.

Trademark Confusion

Trademark confusion is a fairly simple concept, and it boils down to whether the use of a name, a domain name in this case, would confuse a customer as to the product. For example, if you chose to create a shoe brand named Nikey, potential customers may well have thought they were buying Nikes when they bought your Nikeys. Since Nike is a registered trademark, your sale of Nikey shoes almost assuredly infringes on Nike's trademark.

Trademark Protection

To be protected, a trademark needs to be distinctive. There are many ways to be distinctive, for example a mark may be fanciful, arbitrary in the context it is used, made up, purposely misspelled or suggestive of the underlying product. For example, it's become popular to name websites using arbitrary, made up or purposefully misspelled words (yahoo, google, flickr).

Trademarks do not need to be registered to gain protection, they simply need to be used. Although registration with the U.S. Patent and Trademark Office (USPTO) is not required, it is advisable because it greatly strengthens your claim to a trademark if a dispute arises down the road.

Avoiding Trademark Infringement

Once you've established your domain name, perform a search on the USPTO's database of registered trademarks. Don't just search for your exact name, but search for similar sounding names, misspelled versions of your name, synonyms, etc. If you don't find any potentially troublesome names, then search the internet at large, again using similar sounding names, misspelled versions of your name, etc. Finally, search business name registers, which can be found by entering the phrase "business name register" in any major search engine.

If you do find any names that may be in conflict with your domain name, determine whether you feel that your proposed domain name, or their name, cause any potential confusion. For example, ask yourself whether:

• You offer similar goods and services;
• A customer could be expected to type in your domain when trying to find the other company;
• You sell your goods or services through the same or similar channels of distribution; or
• The other company's name is well known.

Avoiding Trademark Infringement: Consider Legal Assistance

If the answer to any of these questions is yes, or if you aren't completely sure, you may want to retain an attorney and seek professional advice. If you have unknowingly infringed on someone else's trademark, the cost of not hiring an attorney can be significant. Call a trademark law attorney in your state.