I have a site with a domain name that is definitely "close" to several trademarked phrases. I didn't create the site to intentionally infringe, I just woke up to the trademark in domains issue and want to find out if I have a problem. I have been to this site: http://www.uspto.gov/main/trademarks.htm and looked up my phrase, but the results confuse me [there are a lot of near matches, and I don't understand how there can be 10 trademarks for the same phrase]. Anyways, this site makes me good money and I believe that it could make a lot more, but before I invest in it any, further I want to make sure that it is a wise thing to do legally. What I'm looking for is some guidance for how to proceed. Who can I contact for an opinion that I can base business decisions on? Also the site above is a U.S. site and I'm Canadian, am I even vulnerable to this type of U.S. law? Thanks for any help.
Well, I know this sounds like a no brainer and is overly obvious, but if it makes money and you want to invest more money in the site, hire a lawyer with expertise in this area and get his/her opinion on it. That way, you'll have a much better idea if you'll want to pour money into the site. I think paying for a lawyer's time is well worth it in this case. Get their opinion and move forward from there.
I'll take the other side, the world has too many lawyers making big bucks off honest people like you. Invest time, but not money in your site, and enjoy the rewards. Common sense indicates you will not have any problem until the site gets really famous, and at that point you may be in for trouble no matter what some so called expert tells you today. Good luck
Trademarks are granted by classification, of which there are over 40 (can be overlapping). For instance, there are several trademark holders for "myspace" but each one has the rights to a particular usage. One might sell storage units, the other is a web portal, etc. The content of the site can play an important role i.e. if you owned "apple.net" you could likely use it if you sold custom t-shirts without infringing upon Apple computer's trademark. applecomputers.net would be trademark infringement regardless of the content because the domain name alone is specific enough to create confusion. Phonetic, misspellings, and even foreign spellings can be trademark infringement (MikeRoweSoft.com found this out). Could they argue you are riding the goodwill they have established for their trademark or that you registered the domain because it sounded similar to theirs in order that you might get traffic from people who might be lead to visiting by seeing the domain name? Some companies have broad trademark infringement where they have established trademarks in many or all classifications making almost any use of the trademark in a domain infringement. You also can't just add words to a domain name to get around infringement (i.e. microsoftexperts.com) and the TLD makes no difference. While searching the USPTO database is a good start, it by no means says you are safe to use a name because it isn't listed. The US has common law trademarks which means you only need to be the first person to use the name (and continue to use) for a particular usage to establish your rights. You don't need to do a Federal Registration to establish rights. This is why trademark searches run hundreds of dollars and still do not offer a guarantee it isn't infringing upon a prior usage. A lot of trademark law is a grey area. Spending a few hundred dollars to consult with an intellectual property rights attorney can save you a lot of money and headache down the road. Common sense can be a very good indicator. Is you domain name very similar to someone else's prior usage and your content or product similar or related (same sector) to theirs? If so, it is likely trademark infringement. If a company is able to successfully argue you infringed upon their trademark, they can recover ALL the revenue the site has generated since it started PLUS damages, legal costs - and in the case of a registered mark, treble their legal fees - and of course, loss of the domain. Many large companies won't bother going after damages unless you force them to take you to court (they just want the domain turned over), but you don't know how aggressive a particular company will be. Even if you win your case in court, you won't get your legal fees (in the US) so that is why paying for an hour or two of legal advice becomes very cheap. Going through court proceedings will easily run tens of thousands of dollars. Anytime you use a trademark or similar spelling you open the door to an aggressive company filing suit for infringement. Often their deep pockets and willingness to spend considerable legal fees is enough to get someone to cease usage. A trademark holder is also under no obligation to contact you before their damages start to accrue. It is your obligation to check before you register a domain - a simple "I didn't know" isn't going to get you off the hook.
And that practically answers your question. The bad scenario is just losing the domain name to one who can demonstrate trademark rights to the term and not successfully challenging their claims. The worst scenario is that party suing under any applicable law, winning, and then trying to enforce the ruling under any agreements with the country you're in. Expect the worst and prepare accordingly. That doesn't necessarily mean you should lose sleep, though.
yes, go ahead and use it till they send u a note... a few years ago i got very nice domain name with e b a y at the end... in 5 days i got email form ebay lawyer who asked me to release that domain and do not use it or they will go after me so i gave up.. but some companies/individuals will wait till u get reach and then will ask u about trade mark... but till then try to make money with your domain and hire lawyers using erned moiney from that domain