Tuesday, May 21, 2013

How to Vet a Domain Name for Trademark Issues

Five Important Considerations When Checking Out a Potential Domain Name 


By Zak Muscovitch.

When you are about to invest in a particularly valuable domain name, the smart thing to do is to check it out for potential trademark related issues. Some of the basic considerations are as follows:

1. Understand the Domain Name


Although it may seem obvious, often people do not completely understand the domain name before purchasing it. What I mean by this, is that the way you interpret the meaning, and/or the value, of the term, may be different than how others interpret the meaning and/or the value of the term that comprises the domain name. 

For example, GARMEN may mean a certain village in Bulgaria to you, but to others, it may be a typo of the well known GPS device manufacturer, GARMIN. Accordingly, in order to properly vet a domain name, you must learn about the various possible meanings and interpretations of a domain name, even prior to directly checking it out for potential trademarks issues.

2. Determine the Purpose of the Domain Name


You can't truly vet a domain name in most cases, without knowing the intended purpose of the Domain Name.  If the purpose of acquiring a particular domain name is to merely hold it and populate it with PPC ads in the interim before one day selling it, you may face different concerns than if you intended to build a website right away.

For example (lets go with that GARMEN/GARMIN example for a bit more....), if you were to acquire GARMEN and immediately put up a real website with content aimed at tourists who wish to visit the village of Garmin in Bulgaria, you would not as easily expose yourself to a typosquatting claim by GARMIN, the GPS device manufacturer.

Another situation where this consideration can be important, is where a particular term has both a descriptive meaning, and also a brand meaning. For example, Levis is a community in souther California, but LEVIS is also a famous brand of jeans. Accordingly, if the purpose of acquiring the domain name was to have a website about this community, then it may not be in conflict with the brand of denim.

3. Conduct an Enlightened Registered Trademark Search


Many people know that a common first step in checking out a domain name for trademark issues is to check the USPTO database, perhaps together with other national databases such as CIPO, or the UK IPO. That's the easy part, however. Knowing what to look for is often more difficult. 

There are numerous data points that you should look for when conducting a registered trademark search. Just because you get a hit, or many hits, when searching for registered marks that correspond to the domain name, does not necessarily mean there is any problem whatsoever. Moreover, that is just one of the data points that you should be looking for. 

Other important data points include;

a) How many different brand owners are out there that all co-exist under the same brand;
b) How diverse are the goods and services associated with a particular mark;
c) How long has a particular brand been registered for;
d) Was a mark registered on the principal or the supplemental register, as the supplemental register   does not afford the same degree of protection;
e) Was the mark obtained on the basis of acquired distinctiveness?
f) What did the examiner have to say about the mark?
g) Was the mark denied registration because it was descriptive?
h) Is the mark a design mark or a word mark?
i) Are there any pending applications?

All these factors can go into developing a picture of the trademark landscape, which will help you to determine whether there is room for you to use your intended domain name in the marketplace. Conducting a proper registered trademark search is not as easy as it may appear. Consulting with an experienced intellectual property attorney can be necessary in order to properly search registered trademarks.

4. Pay Attention to Unregistered Trademarks


Just because a trademark is not recorded in a registered trademarks database does not mean that you can necessarily ignore it. Under the UDRP for example, a common law trademark can also be used as a basis for a complaint.

Accordingly, a Google search is often a good place to start to look for people and companies that are using a mark that is identical or similar to your intended domain name.

5. Check for Past and Pending Domain Name Dispute Cases


If a brand owner has been aggressive in policing its trademark rights in the domain name space, you  may find that it has already commenced, and possibly won domain name dispute cases in connection with domain names that are similar to the one you plan on acquiring. 

Accordingly, checking for past and even pending, UDRP cases through for example, UDRPSearch.com, is often a good place to start to see whether there is a history of this brand owner commencing legal proceedings. If you see that a brand owner has actively gone after anyone with any similar domain name, then that will give you reason to more carefully consider your intended domain name acquisition.



8 comments:

Jen said...

This is one of the most comprehensive articles I've read over the last twelve months on the subject of domain name trademark research.

Thank you for presenting this subject in layman terms. I'm sure your post has just saved many new domain investors from major havoc.

Zak Muscovitch said...

Many thanks for the kind words, Jen! It is this type of feedback that encourages me to continue writing.

John B said...

I have a url I purchased with the specific intent of establishing a brand. It took some time to marshal my resources, but when I got ready to move forward, I found that a 3rd party I had never heard of had registered a trademark on the exact words of my url. I am now in limbo, I do not know if I can proceed and I do not know if I must give my url to this person (he has yet to make such a demand).

Michael Cyger said...

Great article, full of very specific and actionable points. Thanks for posting it, Zak.

Anonymous said...

I agree with Jen...This is just GREAT information
Thanks Zak from a Newbie,
Serry

Zak Muscovitch said...

@John B, Thanks for your comment John. Every situation is different and turns on the particular domain name and trademark, so this is something that needs to be examined closely in order to know what to do.

Madhu Bora said...

Zak,

Thanks much for this article...wealth of information.
I was reading through the NAF (Horsley case)...and looking at what @ John B has raised:
What do u think would have been the case where the two names were:
DegreeSearch.com - Reg TM (Age 7yrs)
SearchDegree.com - No TM (Age 10yrs)

Are these two names considered different from a URDP Perspective?

Madhu

Madhu Bora said...

Zak,

Thanks much for this article...wealth of information.
I was reading through the NAF (Horsley case)...and looking at what @ John B has raised:
What do u think would have been the case where the two names were:
DegreeSearch.com - Reg TM (Age 7yrs)
SearchDegree.com - No TM (Age 10yrs)

Are these two names considered different from a URDP Perspective?

Madhu