Trademark Infringement and Your Domain Name

So you've thought of a catchy name for your new company.  You'll need a web site, of course, so you do some internet research, and, luckily, the domain name you want is available.  You register the domain name and put up your site.  Three months later a  serious-looking letter arrives from a lawyer representing a company with a name very similar to yours, who claims that you are infringing upon her client's trademark.  "But wait," you say, "I own the domain name!"  Using your domain name surely can't be trademark infringement, can it?

It can indeed.  Unfortunately, it is possible to innocently register and put into use an internet domain name and still be liable for trademark infringement.  If the owner of a trademark, particularly a mark used nationwide and registered as a federal trademark, uses its mark to identify goods or services that are confusingly similar to those your company offers, you are likely infringing upon its mark. 

The legal test courts will apply to determine whether an infringement exists is whether there is a likelihood of consumer confusion about the identity of the two companies using the mark.  In other words:  could a buying consumer mistake your web site as that of the other company?  Do your companies sell similar products or services, or do you sell to the same group of people or businesses? 

The best way to avoid this issue is to have a full trademark search conducted before adopting an internet domain name for your business, even if the domain name is available for registration.  Use a reputable trademark search firm or experienced trademark attorney to help navigate through the search process.

©  Sharon L. Toerek 2002-2008.  Toerek is an attorney with the firm of Licata & Toerek in Independence, Ohio.  This article originally appeared in Portfolio Magazine, the monthly journal of the Cleveland Advertising Association.