Hypothetical situation, similar to one I am looking at. Let's say you want to buy the name, AcmeBeer.com, but there is a trademark on "Acme Beer and Wine" and they own AcmeBeerandWine.com. Is buying AcmeBeer.com a violation of trademark law?
It depends..
Will it be used for profiting from their brand name or profiting from a parody of their brand? If so, they can shut you down.
If it's just an information site about their products or the same industry you can buy and use it with no worries.
I've reg several trademarks and I pick the brains of examining attorneys that call me during the TM reg process.
Here is what I've learned so far...
It does not matter if someone registered a trademark before the date that you purchased the exact domain name. Unless you are soliciting them to sell the domain... more on that shortly.
Here are the exceptions...
If you start making a profit by selling their product(s) or your own products by using their tm brand name in your domain or in your site content or derivative/spoof products, they have an opportunity to take you to court and shut you down.
Like Starbucks shutting down the guy that was selling POD parody/spoof of their logo.
It looked like the Starbucks logo at first glance until you notice its a woman holding a wad of cash in her hands and it says Consumer Whore instead of Starbucks.
He had to stop selling these products because it was deemed, "brand confusion"
Here's an example regarding the tm and domain...
My friend purchased the domain ICONHelmets and he was even a licensed reseller for the ICON motorcycle gear company. The ICON company that supplied his helmets sent him a cease and desist letter in the first week that he launched his site.
They said it would cause "brand confusion". They did not want their customers to think his website was their main corporate website. That could be disastrous, especially if he
misrepresented their brand with bad customer service.
He changed his domain to continue selling their gear.
You have the right to register any domain, even one that has a big TM brand name in it like Pepsi.
You can even have insulting information about Pepsi products that you despise.
Let's say a domain like Pepsi-Stinks
You and your content and your domain are protected by freedom of speech laws (in the US) to keep that domain/site.
The Pepsi corporation cannot touch you...unless your website starts making a profit by using the Pepsi name.
Further, if you purchase a trademarked domain name
after someone registers the TM and you try to sell it to the trademark owner... it is considered extortion under what are known as parasite laws (like cyber squatting).
The TM owner may be able (via court) to take your domain free of charge if they can prove that you solicited them for the sale.
That's one of the ways the courts determine intent of purchase, cyber squatting etc.
You can however, solicit them with an offer to sell the domain if they have first contacted you regarding the domain in question.
But you would have to prove this 'first contact' if it ever went to court. So keep any domain inquires from these prospects.
Trademark laws are still evolving so stay up to date (In the US) Just Google the word TESS and the TM office site is the first/top link
Or talk to tm attorneys when you can.
I hope this helps shed some light on this topic
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