Hey guys. I was on the verge of starting a forum/news site/community using the name Boarders United and the Domain Boarders-United.com. Unfortunately midway I found out that a similar company had S3 BOARDERS UNITED CO trademarked as a clothing business (commerce). But it also says "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BOARDERS" OR "UNITED" APART FROM THE MARK AS SHOWN" So my question is, does this mean I need to switch names? Cheers!
Not unless your site will be dealing with things related to the clothing business. Trademarks are issued by the "class" of the business. Dove is a registered trademark for a company selling soap and a snack food maker. I own own a domain in a similar situation and have a saved email reply from the attorney of a corporation that they concur that my class and theirs is different. Essentially they said I am free to use my domain for the current purpose. Now the ill-informed may send you a letter but no reputable attorney will ever get involved unless you are in fact trading on the other persons trademark in the same class. Coined words can transcend the class restrictions. Realtor is a registered trademark that is a coined word and exclusive to the Nation Association of Realtors. No one but them may use that term.
Thanks Colbyt! Another question then. After the site and community is establish, would I be able to offer Clothing with the our logo on it? Not necessarily as a clothing line, but as a souvenir. Or would I automatically be getting into their territory and thus an infringement.
If you are talking about one or two shirts that have the name of your website, and the website content has nothing to do with clothing, you should be fine.
I guess you would have to define "reputable" - I have dealt with some of the largest IP firms in the world and they will take any case as long as you have the money. No matter how bogus the claim is, a "good" attorney can have a vivid imagination and make something out of absolutely nothing. An easy claim is that the name is descriptive or has become genericized. They don't expect to win, just make a reasonable argument that will result in them outspending you. I just settled a case that was represented by a 1000+ attorney firm. A company wanted a domain I had and asked me to name a price. I responded that it wasn't for sale, period. They used this big law firm to sue - and no one, I mean no one, thought they would win. Unfortunately, they can force you spend a million dollars to keep a domain. Few domains are worth a million from a business perspective, and even when you win in court, it's doubtful you will be awarded any attorney fees. This particular domain had never made a penny - it was part of a long term project. I could have spent the money, spent years fighting it in court, or I could decide to settle for what was probably a heck of a lot more than the domain could have been sold for on the open market. That wasn't really the point - I didn't want to sell. I've dealt with a number of large firms - if you have the money to spend, they will make a case. IP law in general, and trademark law in particular, is not black and white, there is a huge grey area that can be exploited if you have enough money. The US really needs to move towards European based civil suits where loser pays attorney fees. That would do a lot to level the playing field.