I am starting a business and registered a domain name that is similar to another that offers the same services, but it is not the same. I am starting to get a little concerned about trademark issues. An example would be "findjobs.com" and "findajob.com", findjobs being the trademarked name. Another example would be "snagajob.com" being trademarked and someone registering a name "snagjobs.com" and using it for the same purposes.
Based on the examples about, would there be trademark issues.
Any insight would be greatly appreciated.
Intellectual Property Law Attorney
YES, there are trademark issues. The first issue you have is you don't seem to have any understanding of the many factors relevant to a determination of servicemark infringement. You are describing a servicemark not a trademark, as you specifically say it is for the "same services". You are in Florida, which is part of the 11th Circuit. The Eleventh Circuit 32 years ago adopted the 5th Circuit's "Roto-Rooter factors" 7-factor test that considers: (1) the type [strength] of [the prior] trademark; (2) the similarity of the marks; (3) similarity of the products the marks represent; (4) similarity of the parties' customers; (5) similarity of advertising media used; (6) defendant's intent; and (7) actual confusion. Long Star Steakhouse v. Longhorn Steaks, 122 F.3d 1379, 1382 (11th Cir. 1997). You can read the actual case here http://goo.gl/1wGAu5
At the very least there are serious issues, as many of the factors go strongly against this close of a choice of marks. In fact, there is a good chance this would be deemed willful infringement with the possibility of treble damages and attorney fee recovery. You would be very foolish, I think, to do this sort of thing without clear positive recommendation from a Florida-licensed IP attorney. I don't think you will get such a recommendation. My fortune cookies for you says; "I see a change in your future to a more distinctive name."
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
Intellectual Property Law Attorney
Yes, you risk a trademark infringement contest. You have to have advice from an Intellectual Property attorney.
My comments have been made without discussion. An attorney client relationship has not been established. There may be conflicts which prohibit my providing you with specific legal guidance. Any contact with you beyond these few general words will start with a disclosure of opposing parties so that a conflict check can be made. You should discuss with an attorney.
The term trademark is used to describe both service marks and trademarks. I'm not sure why this was relevant to my colleague.
That said, it will depend on whether we are actually talking about a merely descriptive term, like some of your examples, or a distinctive trademark. For example, if I have the domain injurylawyer.com, this cannot serve as a trademark. So if someone else comes along and gets injurylawyer.net or injurylawyerNY.com, etc. there is nothing I can do about that. But if I tried to use the domain GooglesUSA.net, this is clearly infringing on the Google trademark irrespective of whether I added an "s" or USA as a suffix. If you intend to use the domain as a trademark then you need to do the proper clearance. If you are just using it as a URL internet address, then stick to the generic because even some descriptive names can qualify for trademark protection.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process and a guide on how to choose a strong trademark.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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Are You Planning on Opening a New E-Commerce Website?
There is much you need to know as you begin your new business. Further, your web site will need legal policies. I suggest you do not attempt to write your own legal policies. This is not where your training and background lie, and though you are probably as smart as an attorney, you do not have their experience.
Below is a checklist for legal issues I use for new e-commerce clients.
1. Business Model – Is your idea viable as a web based business? Do you have a business model written out?
2. Business entity - Are you going to be a C corp, a sub-S, an LLC or a sole proprietorship? There are liability and tax issues that can dramatically affect how your business prospers and selecting the proper entity is a critical first step.
3. Terms of Service - This is your contract with your visitors and is the most important item for any e-commerce site. A little work here brings big dividends in the future. The absence of a written “Terms of Service” can expose your business and possibly you to both criminal and civil liability.
5. FTC guidelines - The FTC has been regulating business advertising for almost a century. All of their advertising guidelines apply to e-commerce sites. The FTC negotiates with established e-commerce businesses but new ones are frequently sanctioned with fines, etc.
6. Domain Name issues? Is your name available? Can you create a Trademark?
Domain names, trademarks and service marks can become valuable assets but the failure to properly protect them may deprive you of much of their value.
7. Trademark - Do you have a brand name free from conflict? Should you start with just common law rights? When Should you register the mark?
8. Copyright - If it is on the web, it already belongs to somebody. Did you buy a license for the images you are using? Using copyrighted materials without proper licensing is not only expensive but under some conditions criminal.
9. Do you need a DMCA policy? This is a very inexpensive “insurance policy” which gives you a “safe harbor” from liability if your visitors post copyright material on your web site.
10. Web Site security issues? Ask Target, etc. if this is an issue.
11. Do you need and have an EIN? You can get that for free. If your business is a corporation (C or S) you need an EIN. Even if you’re a single member LLC or sole proprietorship, you’ll need an EIN to open your bank account.
12. Do you need an arbitration clause? Arbitration is not always pleasant but it’s cheaper and quicker than litigation. Further, an arbitration clause will create a barrier against any class action being brought against you.
13. Do you have employees? If so you need written policies regarding their authority and use of the internet. This can be part of your employee manual.
14. Do you know the difference between a "browser wrap" and a "click wrap" and which do you need? Using a click wrap will greatly decrease your liability.
15. Are you abiding by the Child's Online Privacy Protection Act (COPPA) rules? There are serious repercussions if you run afoul of COPPA.
I discuss this list with clients other issues arise. Finally, I always discuss with my clients their need for good accounting services. An accountant's advice as you start-up can save you many dollars in tax that you might not save if you wait to speak to an accountant until your first tax return is due.
You may want to discuss your situation with a lawyer in more detail. Most lawyers on Avvo offer a free phone consultation.
This post is provided for general informational purposes only and is not intended to be legal advice specific to you. This general information is not a substitute for the advice of an attorney in your jurisdiction. The attorney client relationship is not established by this post.
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