If my domain name incorporates someone's product name, is this trademark infringement?
Dallas, TX
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Posted 17 days ago in Trademark Infringement
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I have an internet business that functions as a resource for the general public, and its name and domain name are the same. I have recently discovered that there is a product that goes by the same two words included in my business's name, minus the '.com,' and I'm concerned this might result in a trademark infringement lawsuit. We aren't competitors, my business doesn't sell products, but I'm still concerned. They are two common words that aren't necessarily commonly used in combination together. My business's website, for example, might be www.greentree.com, and it's name might be GreenTree.com, while the other product would be named Green Tree fertilizer, or Green Tree gardenhose, assuming that they sell a variety of products. Could this possibly be considered trademark infringement?
Answers (3)Daniel Nathan Ballard
This attorney is licensed in California.
Posted 17 days ago.
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Yes, if the content on your website discusses or shows the category of goods in which the product belongs or if your content is related in some way to the product. You need to speak with an intellectual property attorney. Determining the "relatedness" of products and/or information is tricky -- and there are ways to minimize potential confusion. Good luck.
Pamela Koslyn
This attorney is licensed in California.
Posted 17 days ago.
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Yes, not only might your domain name be trademark infringement, but your use, even with your legitmate rights to the domain, may also make you susceptible to a "UDRP" proceeding for ownership of your domain name. Please see the FAQs linked below.
See an IP litigator ASAP so you can address this potential dispute. counseling and advising Client regarding contracts with promoters, venues, fighters, etc., preparation and comment on such contracts, other business and intellectual property transactional issues, and resolution of disputes through demand letters. Kaiser Wahab
This attorney is licensed in Connecticut and 1 other state.
Posted 16 days ago.
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Whether some use of a brand name is infringing or not is sometimes a complex analysis. To begin with the threshold question, it is firmly established that a domain name that incorporates the brand name of another brand name for a physical product can be an infringement. Apple's notorious assault on any domain name containing the phrase "pod" is telling in this regard.
Secondly, if you are wed to that domain name and have invested time and money in it as a brand name then I agree you should be concerned. However, you should not be alarmed necessarily. That being said, you would want to engage an attorney to determine whether there is a short or long term issue with the situation as it stands. This analysis would consider numerous factors, including the similarity of the marks (phonetically, visually, etc.) , the likelihood of confusion int eh public's minds that one of the mark holders was actually the other (this might be mitigated by the fact yours is not a physical products company), and others. Depending on this assessment, you can decide whether or not one or several courses of action are warranted (e.g., do nothing, change your brand name, demand the other company relinquish its brand name, etc.) Also, infringement is not the only issue you should be concerned with. There is also dilution. Simply put, others who use a similar mark to yours, regardless of the space that there are in, may be hurting the brand value and legal enforceability of your mark. Hence that is another issue to assess, while assessing infringement. I hope that this is helpful. Disclaimer: This answer is for informational purposes only and does not constitute general or specific legal advice, nor create an attorney client relationship. |