Question about possible domain name trademark infringement

I'm looking to buy a domain name but wanted to make sure it wasn't an infringement beforehand. Is it infringement if I use part of a companys "ad campaign" as a domain name. For instance, would having the word 'swoosh' in my domain name put me in the crosshairs of Nike even though 'swoosh' is a common word and only DESCRIBES their logo. The logo wouldn't be anywhere on the site, and it would contain other words in the domain name, but would be of an athletic nature. - Is this your question? Add additional information
Answer this question Add to list

Answers (2)

Pamela Koslyn

Pamela Koslyn

Contributor Level 10
Actually Nike owns several trademarks using "Swoosh": http://tess2.uspto.gov/bin/showfield?f=doc&state=4002:2n8fij.2.17, for class 25, clothing/footware, http://tess2.uspto.gov/bin/showfield?f=doc&state=4002:2n8fij.2.10, for class 25, clothing/socks/t-shirts; http://tess2.uspto.gov/bin/showfield?f=doc&state=4002:2n8fij.2.4, for class 25, clothing/headwear.

As a rule, you should avoid even bringing to mind someone else's trademark, since that leads directly to consumer confusion and infringement claims.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
10 1
Kurt Van Thomme

Kurt Van Thomme

Contributor Level 5
The below does not constitute legal advice, does not form an attorney-client relationship, and should not be relied upon to take or refrain from taking any action.

There are really two questions here: first, whether your use of a domain name incorporating "Swoosh" would infringe any of Nike's trademark rights, and second, even if the answer to the first question is no, whether Nike will file a trademark infringement action or UDRP proceeding against you based on your registration & use of the domain name. Without more facts, the answer to #1 is maybe, and the answer to #2 is probably.

As Ms. Koslyn notes, Nike has several potentially applicable trademark registrations. Given that your proposed use of the domain name is at least in the same general area (athletics) as Nike's product lines, it seems very likely Nike would object to your use of "Swoosh" in your domain name. They have asserted the SWOOSH mark many times in litigation before. It is, of course, possible that you would be able to successfully defend your use in either a UDRP or trademark infringement action, depending on how you intend to use the domain name. For example, if you use it noncommercially, you would be more likely in the clear. You should discuss both the domain name in question and your planned use of it with a trademark attorney who can give you a more complete analysis with the additional information.
13 1
Back to Search Results

Ask a Question

Get free answers from real lawyers.