Trademark infringement is a possibility for every business, whether you be on the receiving end of an infamous "Cease and Desist" letter, or whether you find that a competitor is infringing one of your trademarks. Either way, this is the time to find qualified legal assistance in the form of an experienced trademark attorney to help lead you through the quagmire.
If you have received a "Cease and Desist" letter, the first thing that you do should not be to respond to it, regardless of whether the letter tells you to or not. Instead, the first thing you should do is contact your trademark lawyer. If you don't currently have a trademark attorney, ask your business lawyer to refer you to one. If the business attorney claims s/he can take care of this for you, do not take them at their word on this. Inquire as to their actual trademark experience. This is not the time for someone who read a book or two to use you as their test client.
If you are on the other side, and you have found someone you believe to be infringing your trademark, now is also the time to contact your trusty trademark attorney. Be sure to think about the business aspects of the infringement as well. For example, the RIAA is taking quite a bit of heat lately because of their approach to copyright infringement. Suing your customers, especially when the customers may be innocent of wrongdoing, or single mothers, grandmothers, or non computer users in the case of RIAA, may not be a good business strategy. Making this decision along with your trademark attorney, weighing the pros and cons of taking action, is the best way to proceed.
A frequent question among Internet entrepreneurs is "Can I trademark a domain name?" The answer is yes - in some cases. Generally, the rule is that you can trademark a domain name if it is original and not just a combination of ordinary dictionary words. Legal authority NOLO dot com has the following to say on the matter:
"For instance, while domain names that use common or descriptive terms, such as health answers dot com or stamp finders dot com, may work very well to bring users to a website, they usually do not qualify for much trademark protection."
These domains, while catchy and memorable, are really just combinations of ordinary words that all people use. Instead, if you want to trademark your domain, it needs to be distinctive. Here are a few examples of distinctive domain names you are probably familiar with:
Yahoo Google Microsoft
These domains are all candidates for trademark status because they are not ordinary and common words. Nothing beats speaking to a lawyer, but one of the best informal tests you can run your domain up against is the question, "If someone were to say my domain to another person, would it be very clear that they meant our website?" If the answer is no, your will most likely have a difficult time trademarking that domain.
Once you have a good, distinct domain in mind, the next step is to make sure that no one else already owns it. Fortunately, the Internet makes this process easy. The simplest way to check if a domain is available is by visiting a domain registrar. One of the better known domain registrars is Go Daddy, but you can also access this information at the ICANN website. ICANN is a particularly useful site, because they are in charge of approving all other domain name registrars. Simply type in the domain name you are thinking of and in seconds you will know whether or not it is available.
It may be that the domain you want is taken, but do not give up hope. It is actually common practice for people to buy potentially desirable domain names in hopes that someone with serious aspirations for that domain will pay more money to own it. If your dream domain is taken, visit WHOIS dot net to find out who the owner is. There is a fair chance that whoever owns this domain can be persuaded to sell it to you.
Now, a word of caution is in order. It can be tempting to buy a domain that you know another company holds trademark rights to and try to extort money out of them before handing it over. This is a dangerous mistake, and there is significant legal precedent for what happens to people who attempt this.
The reason lies in something called the Uniform Domain Name Dispute Resolution Proceeding, or UDRP. When you buy any domain name from any registrar, you agree to attend these proceedings if someone asserts trademark rights over the domain you bought. Every registrar includes this stipulation in their Terms of Service because ICANN mandates it. So for example, if for some reason Sony did not have a website, you could not buy Sony.com and set up your own website there. Sony would be fully able to come after you in court and demand that you give them that domain name.
An eye-opening e-book called "Your Future in Internet Scams" makes this point clear. Not only is a UDRP proceeding much cheaper and faster than actually suing someone, they tend to favor the trademark holder heavily: you as the domain holder will lose 70% of the time if someone asserts trademark rights over your domain. For this reason it is best to avoid the hassle and just come up with a distinct domain of your own to use.
In closing, the essential thing to know about trademarking a domain name is that it must be distinct. The more readily people associate your domain with you and not other things, the better chances your domain has of gaining and keeping trademark status.
Both Mikki Barry & Eric Corl are contributors for EditorialToday. The above articles have been edited for relevancy and timeliness. All write-ups, reviews, tips and guides published by EditorialToday.com and its partners or affiliates are for informational purposes only. They should not be used for any legal or any other type of advice. We do not endorse any author, contributor, writer or article posted by our team.
Mikki Barry has sinced written about articles on various topics from Patent and Trademark, Legal Matters and Intellectual Property Rights. Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see www.mikkibarry.com. This article is not meant to be legal advice.. Mikki Barry's top article generates over 2900 views. to your Favourites.
Eric Corl has sinced written about articles on various topics from Patent and Trademark, Home Business Failures and Scams and Patent and Trademark. Eric Corl is the President of Idea Buyer LLC, a marketplace for new technology and products that gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can em. Eric Corl's top article generates over 6600 views. to your Favourites.