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.