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Can multiple people own similar descriptive domains?

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Can multiple people own similar descriptive domains? I am in the process of acquiring a new domain name. For example if was looking to buy luxurycardirectory.com and it is already taken then I would buy luxurycardirectoryusa.com is there a problem with this? Do I need to do a trademark search?

Attorney Answers 4

Posted

Yes

This is not a legal advice or solicitation, and does not create an attorney-client relationship. Consult with an attorney. I work for Cardinal Risk Mangement and Cardinal Intellectual Property, IP service companies, but not law firms . I also am the president of Vepachedu Educational Foundation Inc., which is a non profit educational foundation. I also write cultural and scientific compliations for the foundaiton. I also teach at Northwestern university as a guest lecturer. I also provide some pro-bono guidance on immigration and other issues through Indian American Bar Association. I also have a contract with Cardinal Law Group, a law firm, for IP projects. All this information is on my profile at Avvo and also at Linkedin.

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Asker

Posted

yes to what part?

Sreenivasarao Vepachedu

Sreenivasarao Vepachedu

Posted

do a trademark search

Bruce E. Burdick

Bruce E. Burdick

Posted

and as to initial question, provided there are no special circumstances.

Posted

Q:"Can multiple people own similar descriptive domains?"
A: Yes, provided neither are registered trademarks, neither has common law trademark or servicemark rights and provided one is not owned by some aggressive big company that sues third parties over descriptive marks. Merely descriptive terms cannot be registered as trademarks on the Principle Register of the USPTO. They can be registered on the Supplemental Register is they are at least capable of becoming distinctive.

Q:"For example if was looking to buy luxurycardirectory.com and it is already taken then I would buy luxurycardirectoryusa.com is there a problem with this?
A: No, not unless one is registered as trademarks on the Principle Register of the USPTO.

Q:"Do I need to do a trademark search?"
A: Yes, for 3 reasons: (1) to see if the mark is registered at the USPTO, and if so whether on the Principle Register or the Supplemental Register, (2) to see if a large well-funded company owns the prior domain [large, well-funded companies tend to be aggressive about defending their domains and you likely cannot afford to fight], (3) to see if someone is using the other mark and to what extent.

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.

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Posted

The owner of a trademark can file a cybersquatting claim if a person registers, traffics in, or uses a domain name that’s identical or confusingly similar to the owner’s mark if the person had a bad faith intent to profit from the mark and the mark was distinctive at the time the domain name was registered.

So … when registering domain names, it’s best not to register any that are identical or confusingly similar to already-existing, distinctive trademarks. But if you do, make sure you can establish some lawful reason for the registration in order to counter the assertion that your registration was a bad faith attempt to profit from the mark.

Do you need to conduct a trademark search before registering a domain name? Not necessarily. If the domain name you want to register is, for example, ILikeJewelry.com then no search is needed because the odds that that phrase is a distinctive trademark is very, very, very close to zero. But other domain names can serve as trademarks. You and a trademark attorney who knows a thing or two about domain names should decide together the level of due diligence you ought to engage in before registering the main domain names for your business.

One other point: Most often the main domain name used by a company is the company name, the name of a key product or a slogan used to brand the company’s goods or services. So if the company intends to publish a website at the url represented by the domain name it makes very little sense to register one that cannot serve as a trademark. Unless, of course, the intent is simply to buy and sell the domains or to park a pay-per-click site there. In that case, any domain name that's not cybersquatting on another's trademark will do.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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Posted

It is certainly possible to register any domain name that is available for sale, but you should be sure that you are not infringing on the look/feel (copyrights) or trademarks of another party. If the domain name itself is truly very descriptive (which will make it difficult to register on the principal trademark register anyway), you may want to register the domain, but call the company something else in the content of the website. In other words, the domain you register does not need to be identical to the company's name.

For example:
I may want to register bestcoffeshop.com as a domain but my company's name is actually Random Beans Coffee.

Good luck and I advise you speak to a lawyer before launching. Most lawyers (myself included) do offer free consultations.

Olinerlaw.com

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