Domain Names and Trademark Laws

[HHDomains]

What is the full story with trademark laws?
I just purchased a domain name that is a name trademarked by a large company.

Is the domain name of any value or is it worthless because the company will claim trademark if you try to develop it?

 

[Jeff]

I saw the thread ... first thing you'd want to do here is check the ™ 's at: www.uspto.gov

Then, peruse this "Legal Issues" Forum and wait for further commenting, as your inquiry is a very broad one - and legal matters are typically very case specific. Still, general insight and opinion (as well as important and worthy resources and links) can be obtained here that will prove useful for you in the future, IMHO.

 

[Riceman]

Re: Domain Names and Trademark Laws

Originally posted by HHDomains
What is the full story with trademark laws?
I just purchased a domain name that is a name trademarked by a large company.

Is the domain name of any value or is it worthless because the company will claim trademark if you try to develop it?

I once registered a name that sounded similiar to an established sporting goods chain in the us. The company wasted no time in sending me threatening letters. Long story short, I gave them the name. It was not worth my time or money fighting it. I now avoid trademark names.

 

[HHDomains]

Thanks CoolHost and Riceman.

This name is not similar to the product in question, it is the name of the product in question.
Should it not be encumbant on the company to protect the trademarked name by registering the domain name?

 

[Riceman]

Originally posted by HHDomains
Thanks CoolHost and Riceman.

This name is not similar to the product in question, it is the name of the product in question.
Should it not be encumbant on the company to protect the trademarked name by registering the domain name?

Not really. It would cost them a huge amount of money to do defensive registrations on dozens if not hundreds of variations of a name they have trademarked.

 

[Jeff]

Should it not be encumbant on the company to protect the trademarked name by registering the domain name?

Nope.
It is actually encumbant on those registering to not secure ™ domains, in my view.

 

[Riceman]

There are a few situations where a generic term is trademarked this is the only gray area where legally you can register the name . It can be hard in a court to enforce a trademark in that case

 

[RJ]

It may be possible to put it to a legitimate use, such as acting as an authorized dealer for the product or in some rare cases, as a fan site or informational site for product owners.

Other than those cases, it sounds like a plain case of trademark violation. The process is that if the trademark holder wants the names away from you, they would first send you a Cease and Desist Letter demanding you give the names. If that doesn't work, they could file a UDRP domain dispute against you.

You can read more about UDRP here at NamePros or visit ICANN.org. A UDRP case takes a couple of months and you have a chance to defend why you own the names in question.

 

[Riceman]

I think there is a cost associated with udrp. I think the icann site should provide more useful info

 

[HHDomains]

Ok. I've been doing some research and Sofjoy is neither trademarked nor has a registered copyright.

How does this effect the big picture? Or does it?

 

[Jeff]

SofJoy®

When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark.

The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]

Link: http://www.uspto.gov/web/offices/tac/tmfaq.htm#DefineServiceMark

Parent company: http://www.fortunebrands.com