Domain Name Vs Company Name (Phrase)

It is simply not possible to answer a question that says "for example". Trademark law is all about the "gray areas". Your question results in too many legal "If - then" possibilities that would not be helpful other than the general information that has already been provided to you so far by previous responders. And if this name is the cornerstone of your marketing strategy, speak to a trademark attorney in private to come up with a strategy. It is not possible to do so here.

Based on the facts you disclose, one cannot adopt a generic name as a trademark. Whether the name is generic or descriptive needs to be discussed with an IP attorney, as does the issues regarding the domain name.

I agree with my colleague that my first concern would be whether we are really talking about a trademark here or really just a generic name. If your name is Boston Acura Parts and you sell Acura auto parts in the Boston area then this is not a trademark. Even though the name might be too general and generic to warrant trademark protection, however, it may be registered with the state and as such afforded some protection under state laws, for example, exposing you to unfair competition claims, etc. if you went ahead and used the same. This is always something to look into, but frankly I would avoid that anyway because it would be far better to come up with a distinctive brand. 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

I know of no principle of law or statute that would preclude a person from lawfully registering "BostonAcuraParts" as a domain name and publishing a webpage at that location even in light of the "Acura" trademark and the fact that a company is already doing business as "Boston Acura Parts." The use of "Acura" in that domain string is nominative and, as a whole, that string and company name is clearly generic and therefore not protectable as a trademark. And whatever trade name rights are conferred by a state through its corporation law cannot be asserted in a proceeding to challenge a domain name registration. You still need to speak with your own Massachusetts-licensed trademark attorney before you register the domain name. There are always more facts in play than are disclosed in a Q&A forum and, moreover, your own attorney will have to discuss with you the content you publish at the site, any potential disclaimers and the risk of suit from either Acura or Boston Acura Parts. Good luck.

All of my esteem colleagues above miss the mark. A domain name is not a trademark. Period. However, if you register a domain name that is confusingly similar to someone else's trademark, and you do not have a bona fide purpose for that mark and you are using it in bad faith, you can lose that trademark registration to the holder of the mark. The mark holder need not have a federally registered mark to attack your domain name registration, a common-law mark can be enough. Ultimately, under the policy that determines whether your domain name is "cybersquatting"--the domain name dispute resolution protocol (UDRP)--the trademark holder has a very low burden in availing itself of the policy and demanding transfer of the offending domain name. While the UDRP states that the complainant must have trademark rights, the burden is very low. You should definitely consult with an attorney who understands domain name disputes and the UDRP. While this generally falls under trademark law, it is a sue generis area of law that is only peripherally related.

Whether you can legally use a domain name and whether you can legally use a trademark are separate questions. In other words, a domain name may not necessarily be a trademark. If it is not a trademark, there cannot be trademark infringement. Therefore, it could be possible to use a domain name without infringing another's trademark. Your research may have indicated that merely descriptive terms cannot be trademarked, and that Boston Acura Parts might fall in that category. However, whether you can legally use Acura in your name might be something you should further investigate.