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question About Trademarks

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mike2100

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Hi ,I want to buy a domain , I like it , how can I make sure 100% that I wouldn't face any troubles for trademarks issues , the domain is registered since 2000 , it's not exactly a one word or 2 words domain , something like "WordTech" , so the other word is not complete

I searched here : https://www.uspto.gov/trademarks-application-process/search-trademark-database
Trademark Electronic Search System (TESS)

found some trademarks for that exact word are dead , like "WordTech", others like " globalWordTech", "GreenWordTech "....etc are alive


what does that mean ? can 2 words trademarks affect my word domain ?
and what about the dead exact ones ?


searched on linkedin , found a company , in their discription they wrote WordTech®

so I'm not sure
is there another database that i can search ?
any thoughts ? what can I do :\ ?
.

Thanks ,
 
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Lets say you have "WordTech" domain.

And you can find WordTech® on LinkedIN, Facebook or somewhere else.


1. You cannot find any evidence of their trademark in tm databases.

But still, they (WordTech) can prove their tm rights !
They have to provide some type of evidence of use of "WordTech" as a trademark, showing that
"its mark has become a distinctive identifier which consumers associate with the complainant’s (Wordtech) goods and/or services".
"Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."

a) If they can prove their tm rights in their name, we have next:
- your domain is obviously similar or confusingly similar to their mark (first element)
- you dont have rights or legitimate interests in a domain name (second element)
- THEY HAVE TO PROVE you registered and used your domain in a bad faith (third element)
; What does it mean depends on many things. Read as much as you can and try to figure it out.
= read UDRP cases
= you can also find many useful posts here

b) If they cant prove their tm rights, you are safe.
(but now you are not sure whether they can or not)


2. They have registered trademark or service mark rights and they are visible in tm databases.

Still it doesnt mean you "violate" their trademark rights !!!
Its not trademark infringement UNLESS THEY PROVE you registered and used your domain in a bad faith (third element).
 
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Lets say you have "WordTech" domain.

And you can find WordTech® on LinkedIN, Facebook or somewhere else.


1. You cannot find any evidence of their trademark in tm databases.

But still, they (WordTech) can prove their tm rights !
They have to provide some type of evidence of use of "WordTech" as a trademark, showing that
"its mark has become a distinctive identifier which consumers associate with the complainant’s (Wordtech) goods and/or services".
"Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."

a) If they can prove their tm rights in their name, we have next:
- your domain is obviously similar or confusingly similar to their mark (first element)
- you dont have rights or legitimate interests in a domain name (second element)
- THEY HAVE TO PROVE you registered and used your domain in a bad faith (third element)
; What does it mean depends on many things. Read as much as you can and try to figure it out.
= read UDRP cases
= you can also find many useful posts here

b) If they cant prove their tm rights, you are safe.
(but now you are not sure whether they can or not)


2. They have registered trademark or service mark rights and they are visible in tm databases.

Still it doesnt mean you "violate" their trademark rights !!!
Its not trademark infringement UNLESS THEY PROVE you registered and used your domain in a bad faith (third element).
@Dominique, I agree with your reply here. I just read an article on Domain Name News, March 2025, that ALL three conditions need to be proven for trademark rights to be enforced. In Canada anyway (CIPO) if you own a registered trademark, you are responsible for using it in connection with the specific goods or services listed in your registration. Failure to demonstrate use of a registered trademark for the registered goods or services in the three years preceding a notice can lead to the expungement of the registration.
 
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how can I make sure 100% that I wouldn't face any troubles for trademarks issues

You can't.

There is no such thing as 100% certainty, and most of the advice you get on forums is awful.

Its not trademark infringement UNLESS THEY PROVE you registered and used your domain in a bad faith (third element).

The problem with that statement is that if the mark is inherently distinctive - i.e. has no substantial use other than in connection with the trademark, then bad faith is going to pretty much be a no-brainer.

For example, take something like "Microsoft". There is no meaning or use for "Microsoft" other than as a reference to the trademark owner. So, this notion of "it depends on use" is just not a useful concept when we are talking about highly distinctive or famous marks. If you register a domain name with "Coca-Cola" in it, nobody is going to wait around to see how you use the domain name in order to determine whether you registered the domain name with the trademark owner in mind.

That observation is also the starting point for realizing that not all trademarks are equal in terms of distinctiveness, reputation, or scope. Consequently, trademark disputes tend to be highly fact-sensitive. In other words, the specific details matter. So, if you are concerned about an actual domain, then saying "it's kind of like 'wordtech'" might be good for a purely hypothetical discussion, but will probably have absolutely no value in relation to whatever your particular situation might be.

It's a lot like having a heart attack and saying, "I have a pain in a part of my body. It's a part of my body which is kind of like my stomach. What should I do?"

The answer of "try taking an antacid" is not going to help with your heart attack.

found some trademarks for that exact word are dead , like "WordTech", others like " globalWordTech", "GreenWordTech "....etc are alive


what does that mean ?

It can mean a lot of different things. A "live" trademark registration might indicate that someone has quit using and abandoned their trademark before the next ten year renewal deadline for the registration. A "dead" trademark registration might indicate that someone is still using their trademark, but forgot to renew the registration.

So the "live" registration might actually be a dead trademark, and the "dead" registration might actually be a live trademark. The opposite might also be true.

The (US) trademark registration database is a useful tool, but it does not by itself answer the kinds of questions that domainers believe it answers.

Imagine that you are trying to figure out if I own a Mercedes. You go to the Department of Motor Vehicles, you search auto registrations and you find that a Mercedes is registered to me?

Does that mean I own a Mercedes?

No, it does not. I could have lost that car in an accident last week, and I no longer own that Mercedes. The registration with the DMV is still going to be in their database, even though I do not have the car anymore.

Imagine the opposite. You search the records and you do not find a Mercedes registered to me?

Does that mean I do not own a Mercedes?

No, it does not. Maybe I keep one on my property in a showroom and do not drive it on public roads. In that case, I do not need to have the car registered for use on public roads, and can simply keep it on my property. Or, maybe I bought one this morning, and haven't registered it yet.

You are asking questions of a database which that database is not designed to answer.

A better starting point is:

I want to buy a domain

Okay. Why?

I. Why do you want to buy this domain?

A. Do you plan to use it for something or do you plan to post it for sale?

(1) If you plan to use if for something, then what do you plan to use it for? Is there someone else using that combination of words for the same or similar purpose already? Are they alone in doing so, or does an entire industry use that combination of words for that purpose (and not in reference to the goods or services of one particular party in that industry)?

or

(2) If you plan to post it for sale, will you use PPC parking? If so, what kind of ads are produced by the PPC system? Taking the subject matter of those ads, go back to subsection (1).

or

(3) If you plan to sell it using a sales lander, why do you think someone would want to buy it? Consider using a sales lander which you can customize to explain why you think the domain is valuable, such as "BigFish is a great domain name for anyone who is interested in large marine animals". And, again, if you think someone would buy it because it would be useful for a particular industry or set of goods or services, then go back to subsection (1) and consider whether someone already has a distinct reputation in that phrase for those goods or services.

-------------------

Things like trademark databases will provide a starting point for further research on that subsection (1) set of issues, but they will not answer your question.

Databases provide data. If you want answers, then you need analysis of that data. If the analysis requires knowledge and experience you do not have, then you can decide whether you want to embark on an entirely separate career in order to gain that knowledge or experience, or you can find someone who has already done that part.

If the idea is that you intend to make money, such that answers are valuable to you, then you might ponder questions like "how much is it worth to me to have an answer?" and find out whether the answer to that question might match up with "how much would someone who knows what they are doing want in order to look at this and provide one?".
 
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