If you have a Trade mark....does that mean you have the rights to that Domain name?

Discussion in 'Legal Issues' started by Woodcs82, Jul 9, 2011.

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  1. #1
    If you have a Trademark....does that mean you have the rights to that Domain name?

    -C
     
    Woodcs82, Jul 9, 2011 IP
  2. mjewel

    mjewel Prominent Member

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    #2
    The short answer is no. A trademark gives you rights to mark for a particular type of usage, not exclusive rights to a word(s) or mark. Famous marks and coined terms can have broader protection (i.e. Google, IBM, xerox).
     
    mjewel, Jul 10, 2011 IP
  3. Woodcs82

    Woodcs82 Well-Known Member

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    #3
    Why would (i.e. Google, IBM, xerox).be able to get the domain name for their Trademarked name and not XYZ inc. for example?

    Thanks,

    -C

     
    Woodcs82, Jul 10, 2011 IP
  4. Nigel Lew

    Nigel Lew Notable Member

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    #4
    It's hard to answer this, that is what lawyers are for but "first use in commerce" likely comes into play here as well.

    Nigel
     
    Nigel Lew, Jul 10, 2011 IP
  5. Dave Zan

    Dave Zan Well-Known Member

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    #5
    Plus famous and coined or made-up marks have essentially "planted" themselves into their
    consumers' minds. Anytime those consumers see anything bearing their trademarks, they'll
    virtually associate it with their respective sources.

    Generally it's rather hard (if not impossible) to show trademark infringement or likelihood of
    confusion occurred if a trademark existed after the domain name-sake was registered.
     
    Dave Zan, Jul 10, 2011 IP
  6. Your Law School

    Your Law School Guest

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    #6
    There is a federal law called the Anticybersquatting Consumer Protection Act, which was passed in November of 1999. (Prior to this there was the Federal Trademark Dilution Act) Basically, it provides grounds to file a law suit against someone for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. This act made it easier for individuals and companies to take over domain names that are confusingly similar to their names or valid trademarks. Here is an interesting case http://www.techlawjournal.com/courts/avery/19980417.htm The court found the defendant in this case to be a cyber pirate!
     
    Your Law School, Jul 10, 2011 IP