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Introduction
This article is to acquaint you with some of the factors affecting which domains you can register safely; i.e., without violating any statutes or risking unpaid confiscation by others desiring to own your domain. The discussion to follow is somewhat USA-centric, so if you are not a US citizen you’ll need to research the differences that may apply to your country of residence.
Trademark Law
In the US, this is a somewhat nebulous subject, impacted by a combination of federal intellectual property law in general, trademark law specifically, applicable case law, and ICANN practices. As a general rule, it is risky to register a second level domain name identical or “confusingly similar” to a phrase already trademarked. You can check for live, trademarked phrases at uspto.gov, which provides a powerful search feature to help you.
The mere fact that a phrase is trademarked does not automatically mean you are out of luck. For example, if the trademark is for a single real dictionary word, like “dog” or “cat,” you may be able to challenge the trademark on “public domain” grounds. The same applies to commonly used phrases, like “time will tell”. Unique phrases, like “Joe’s Pro Bike Shop” will certainly lead to problems on your end.
Sometimes, even a specific trademarked phrase, or something very similar to it, may be safe as long as there is little chance of confusion with the trademarked business, and a low probability that your domain will siphon internet traffic away from the trademark owner’s web site. An example might be a phrase that is used within a completely different business sector than that of the trademark owner, and there is no duplication of the trademark owner’s unique styling of the phrase in his/her corporate logo. These decisions can be complex, and may require the advice of a competent intellectual property lawyer.
The Clinton era Lanham Act provides some guidance on the general topic of internet domain trademark law. It is not an all-encompassing law, as common law and state regulation also impact the subject. Section 43(a) of the Lanham Act (15 U.S.C.
Introduction
This article is to acquaint you with some of the factors affecting which domains you can register safely; i.e., without violating any statutes or risking unpaid confiscation by others desiring to own your domain. The discussion to follow is somewhat USA-centric, so if you are not a US citizen you’ll need to research the differences that may apply to your country of residence.
Trademark Law
In the US, this is a somewhat nebulous subject, impacted by a combination of federal intellectual property law in general, trademark law specifically, applicable case law, and ICANN practices. As a general rule, it is risky to register a second level domain name identical or “confusingly similar” to a phrase already trademarked. You can check for live, trademarked phrases at uspto.gov, which provides a powerful search feature to help you.
The mere fact that a phrase is trademarked does not automatically mean you are out of luck. For example, if the trademark is for a single real dictionary word, like “dog” or “cat,” you may be able to challenge the trademark on “public domain” grounds. The same applies to commonly used phrases, like “time will tell”. Unique phrases, like “Joe’s Pro Bike Shop” will certainly lead to problems on your end.
Sometimes, even a specific trademarked phrase, or something very similar to it, may be safe as long as there is little chance of confusion with the trademarked business, and a low probability that your domain will siphon internet traffic away from the trademark owner’s web site. An example might be a phrase that is used within a completely different business sector than that of the trademark owner, and there is no duplication of the trademark owner’s unique styling of the phrase in his/her corporate logo. These decisions can be complex, and may require the advice of a competent intellectual property lawyer.
The Clinton era Lanham Act provides some guidance on the general topic of internet domain trademark law. It is not an all-encompassing law, as common law and state regulation also impact the subject. Section 43(a) of the Lanham Act (15 U.S.C.
Tags: Internet Domain Registration, Nebulous Subject, Uspto
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