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Am i going to be sued for domain owned for similarity?
Anonymous7 views3 answers
I just bought a domain that have this structure "something"app.com and that "something" is a popular website.
Am i eligible for trademark infringement? I mean that "something" is a general word that it might be used for lots of meanings... So it's not really a unique word. Also i checked up that that "something" word had been registered as trademark by 8-9 different registrars for single classes by everyone. But in that form "something"app wasn't registered by anyone.
So i would like to know if i am eligible to be sued from one of those companies.
And also in the same time what if i will register a trademark for this exact name?
Thanks!
Q: "So i would like to know if i am eligible to be sued from one of those companies."
A: Of course. Would any one or more win? No one can provide you with that risk analysis without first evaluating all the facts. Cybersquatting and trademark infringement are very fact dependent and even minor variations and subtle differences in presentation are quite important.
Q: "... what if i will register a trademark for this exact name?"
A: Perhaps you can -- or perhaps not. Whether you can depends on HOW [not merely whether] others are using the name in commerce.
You need to speak soon with your own California-licensed trademark attorney because simply registering a domain name that "is identical or confusingly similar" to an existing trademark can be unlawful. Visit the link below and read 15 U.S.C. 1125(d). Good luck.
Trademark Infringement is the use of a word, symbol or device previously used by another person in commerce regarding a similar good or service. See an Intellectual Property attorney.
So, I hope you can appreciate that you just can't receive any reliable trademark clearance advice here on this platform and certainly not in the hypothetical. We will have to know the specifics of the mark in question along with the goods and services it will identify in order to give you any real advice. There are many marks that share the same or similar names but are not a problem because they are in two completely unrelated goods/services (e.g., Delta Airlines vs Delta faucets).
That said, your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
Best regards,
Frank
Natoli-Lapin, LLC