Trademark questions

[valuedomains1]

One thing that concerns me as I start to get into domaining is the trademark issue. Needless to say, the thought of getting into some kind of a conflict over this is kind of scary. My question, therefore, is where do you go to check definitively for whether a domain name you're considering violates a trademark? Also (and, by the way, while I know this isn't a legal forum and there probably aren't any lawyers here), I'm sure most of you deal with this type of thing all the time), does anyone know how close something has to be to a trademarked name to be a problem? That is, here's an example I thought of. Obviously, McDonald's is a trademarked name. But what if, completely hypothetically (it's not even available), I wanted to register the name mcdonald.com -- note the lack of an "s" at the end. Would that, do you think, likely count as a trademark violation just because it's similar to a trademarked name?

Any ideas would be appreciated. Thank you!

 

[JudgeMind]

The trademark associated with the phrase "Litecoin" seems to have been lifted.

I was looking into it as i was going to register a domain containing the phrase, see below. A i wrong?

http://tsdr.uspto.gov/#caseNumber=85897410&caseType=SERIAL_NO&searchType=statusSearch

 

[Name Trader]

McDonald.com would not be in trademark violation of any of McDonalds.com trademarks, if it never infringed on any of MacDonalds.com's trademarks. If say McDonald.com was used as a kilt sales website, it would not be infringing on any of McDonalds.com tradermarks (assuming they have no trademarks for selling kilts)

 

[enlytend]

When you register a trademark, you register it for one or more classes of Goods and Services. Others can still use it, but not for the classes for which it is registered.

McDonalds is a "well known" mark - well-known marks have a broader reach. Your product can't be similar or confused with them or potentially damage their interests. Traditional tartan kilts - probably safe, Baseball caps in red and yellow - not so much.

 

[Hypersot]

What I do is check all variations of a name in the following sites:
https://www.tmdn.org/tmview/welcome.html
http://www.trademarkia.com
http://www.wipo.int/romarin/searchAction.do
http://www.namecheck.com

if name is country specific, I use this page to check the country's register office website:
http://www.rba.co.uk/sources/registers.htm

Finally, I use sites like the following, to check if there is a company somewhere but haven't trademarked their name. Since I'm not willing to get into conflict with anyone, even if they haven't registered their name, I check just to be sure. Examples are:

http://www.mca.gov.in/DCAPortalWeb/dca/MyMCALogin.do?method=setDefaultProperty&mode=16 (for companies in India)
http://www.uibm.gov.it/uibm/dati/Testo.aspx (for companies in italy)

http://wck2.companieshouse.gov.uk//wcframe?name=accessCompanyInfo (for companies in the UK)

etc.

Only then I register a name.

As far as the 'similarity' is concerned, what enlytend mentioned is correct

hope I helped

 

[forge]

Honestly, it's not that scary. A modicum of caution would be prudent to protect your domain assets. Avoiding glaringly obvious TM-infringing names should be a no-brainer. There are gray areas without a doubt. I've had about three run-ins with the dreaded "C&D". One I simply ignored and it went away, another I did end up surrendering the name to avoid a nasty UDRP, and the most recent one ended up with a sale.

 

[Rado_Ch]

While generally the advice you got is correct, I think that the example with McDonald.com specifically would get you in trouble, even if you sell kilts on the domain. Big brands, as mentioned, embrace a broader reach of their brand and the separate words in the name might also fall under the brand. McDonalds in question, in their Terms, have a long list of trademarks owned by the corporation. Same with other big moguls. I had a case a few years back with a customer of our hosting, whose domain was pursued by Playboy for trademark violations. The domain in question was not even that similar (something in the likes of PlayboyEndeavour.com , cant really remember the name) and the content on the website was not in violation of Playboy products. Still, he was quickly forced to drop the domain to avoid further issues.

That being said, there are numerous occasions when even such large brands lose trademark cases like the infamous South African trademark problems or the battle against Illionis based family restaurants owned by a man legally named Ronald McDonald.

My advice - too much hassle and plenty of loopholes for an inexperienced domainer to handle. Best to stay out of it.

 

[DU]

.... If you are in the business of selling names then be in the business of selling names ...

A legal threat is just a threat and the weight depends on who it is thrown at more than who by, imho.

 

[verbster]

While generally the advice you got is correct, I think that the example with McDonald.com specifically would get you in trouble, even if you sell kilts on the domain. Big brands, as mentioned, embrace a broader reach of their brand and the separate words in the name might also fall under the brand. McDonalds in question, in their Terms, have a long list of trademarks owned by the corporation. Same with other big moguls. I had a case a few years back with a customer of our hosting, whose domain was pursued by Playboy for trademark violations. The domain in question was not even that similar (something in the likes of PlayboyEndeavour.com , cant really remember the name) and the content on the website was not in violation of Playboy products. Still, he was quickly forced to drop the domain to avoid further issues.

Think in reverse: Would "Playboys" infringe on "Playboy"?

 

[DU]

Think in reverse: Would "Playboys" infringe on "Playboy"?

Always the same answer: depends on usage and/or intent.

 

[Rado_Ch]

Think in reverse: Would "Playboys" infringe on "Playboy"?

Well...no...just because both are trademarked under the Playboy Enterprises Inc.

 

[valuedomains1]

Okay, I seemed to have sparked some discussion here. Good. Just three clarifications, though:

1. Again, McDonald's was just a hypothetical example to illustrate the point of singular versus plural as a variation of a trademarked name. The name I was considering wasn't for anything even resembling that big a brand.

2. As for what goods I would be selling and whether or not it would be in conflict with the product line of the trademarked name, I wouldn't be selling anything at all. That is, I'm not planning on getting into site development yet, and am instead just trying to "flip" the name itself. Does THAT make a difference -- just possessing a name and not selling any products on it?

3. If I received a C&D letter and had to surrender a name, so be it. I'm not planning on going for very expensive domain names yet anyway. My fear, therefore, is not having to give up the name, but actually getting sued and having to surrender personal assets other than the domain name (as in, you know, money!).

 

[DU]

2. It's still based on usage and intent and level of damage to the TM
3. See my earlier comment in post #8.

There's nothing too complicated about this in reality: If you're trying to benefit from someone having a mark, you're trying to benefit from it and that's a potential problem. I wouldn't try, like others, to hide behind empty arguments like "it's generic" when it's clearly not. Kumquat.com might be generic, but KumquatAnyOtherWord.com loses that argument as much as domainers like to claim they came up with the term all by themselves.

Lower end domainers aren't likely to get into trouble until they start looking for it.

 

[verbster]

Lower end domainers aren't likely to get into trouble until they start looking for it.

I'm not so sure about that. I remember getting my share of C&D letters and outright threats on some pretty bad domains.

 

[buyselldoms]

Rules apply differently to superbrands...

McDs are amongst the worst, they just throw money at any dispute and 9/10 you will lose.

One of the most recent cases is BskyB t/a "Sky" and Microsoft. Microsoft lost.

"Sky" wasn't happy about Microsoft's "Sky Drive". (Sky <=> the "Cloud") Bear in mind "Sky" is a generic dictionary word.

 

[buyselldoms]

Okay, I seemed to have sparked some discussion here. Good. Just three clarifications, though:

1. Again, McDonald's was just a hypothetical example to illustrate the point of singular versus plural as a variation of a trademarked name. The name I was considering wasn't for anything even resembling that big a brand.

2. As for what goods I would be selling and whether or not it would be in conflict with the product line of the trademarked name, I wouldn't be selling anything at all. That is, I'm not planning on getting into site development yet, and am instead just trying to "flip" the name itself. Does THAT make a difference -- just possessing a name and not selling any products on it?

3. If I received a C&D letter and had to surrender a name, so be it. I'm not planning on going for very expensive domain names yet anyway. My fear, therefore, is not having to give up the name, but actually getting sued and having to surrender personal assets other than the domain name (as in, you know, money!).

1. As a rule, plural and singular versions of a trademark are in effect the same (arguably)
2. If you are selling the domain in the future, you are selling the domain as a product itself. Its not the same as using that as a brand to trade other goods; but still seen as trading - they would argue the fact you are selling a domain that infringes their trademark is for you to "pass off" yourself as being them having the right to sell off the domain name.
3. C&D 4 times out of 5 are not worth the paper they are written on. An intelligent person who went ahead with this major risk would set up a company to shield themselves from liability caused from a lawsuit.

Also be aware of the following:
1) A registered trademark that isn't being used has no rights (specifically if registered and never used)
2) An unregistered trademark (should be marked with TM or SM) that wont appear on any register has a lot of rights when being used to trade

 

[Dave_Z]

IMHO, this ultimately depends on how aggressive (or not) the trademark holder is. The more unique and/or famous their trademark (and the more resources the mark holder has), the more likely they'll protect it.

In short, you try to know more about who or what you'll possibly deal with.

 

[DU]

I'm not so sure about that. I remember getting my share of C&D letters and outright threats on some pretty bad domains.

So you registered domains and did nothing with them and they sent C&D?

What did they ask you to C&D? Nothing?

 

[alien51]

Well, in fact, if you will take the time to read the WIPO cases posted on their wesbite, you can really learn a lot on how trademark works as far as domains are concerned.

Many explanations there, the accusation, the defense, then the ruling of the judges, the lessons are very straightforward. You can pick-up ideas on how to maneuver yourself around these trademark issues.

 

[verbster]

So you registered domains and did nothing with them and they sent C&D?

That is correct. When I first got into domaining, mostly I just parked domains while trying to figure out how to sell them. I learned about C&Ds right after I started getting them. my first C&D e-mail and hardcopy arrived about two weeks after buying ar//bys /// card////com. Scared the bejesus out of me. (I think that was around the time I discovered NP.)

What did they ask you to C&D? Nothing?

I can't remember specifics, but basically they said using the domain the way I was infringed on their TM and I needed to transfer the domain over to them, which I did after spending a few hours reading about TMs.