How To Avoid Trademark Infringement When You Choose A Domain Name

Michael Gargiulo - CEO, VPN.com

By: Michael Gargiulo, CEO at VPN.com

Updated: 1:47 PM ET Fri, August 28th 2020

Trademark stamp.

Avoiding trademark infringement for your company’s domain name is critical to your success – and to preventing legal hassles that could put you out of business. Companies like Disney, Coca-Cola, and other multinational brands have proprietary ownership over certain trademarks that are included in their domain names, as do many other businesses.

Ensuring the domain name you pick doesn’t infringe on their trademarks is important. There are a few key things to remember about making your website fully compliant with copyright and trademark regulations to avoid landing in legal hot water.

Understanding Trademark Infringement

To prevent using a protected trademark as part of a domain name, it’s important to understand what a trademark is and when using a proprietary name can lead to legal action. Some cases of infringement may deliberate, while others may be a simple mistake, and determining the difference can help you secure and protect your trademark and domain name.

What Is A Trademark?

A trademark is any sort of name, logo, or catchphrase that is used to promote a business. Trademarks are part of a company’s marketing efforts and are used to help customers associate the trademark with the company.

Designs such as the Mickey Mouse shape, or an apple associated with electronics are considered trademarks. While mice and apples may not be a trademark when used for marketing, say, a pet shop or a brand of apple juice, when used to promote their respective companies, these are considered trademarks. This is because of the branding and association by consumers between the trademarks and the company.

What Is Trademark Infringement?

According to the US Patent and Trademark Office, the government body that issues patents and regulates fair uses of trademarks and other proprietary branding information, trademark infringement is, “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

Therefore, if a business uses a trademark belonging to another company to ride on the coattails of that company’s recognizability, then that company may have legal grounds to take action against the infringing company.

Trademarks And Domain Names

Domain names and trademarks aren’t the same things, although there are some similarities. A good domain name will add to your branding initiative, making it easier for customers to remember your website and may even increase organic traffic, if your domain name contains words that people commonly associate with your product.

How A Domain Name Can Be Considered Trademark Infringement

However, just because a company “owns” a trademark, that doesn’t mean that they’re automatically owners of associated domain names. Domain names may be registered independently of copyrighting or patenting a trademark.

For example, an HVAC company owned by a Mr. McDonald may include “McDonald’s” in his company’s domain name, even though that name is most commonly associated with hamburgers. However, if a local hamburger joint owned by a Mr. McDonald used “McDonald’s” in their domain name, there could be grounds to infer infringement.

How To Avoid Trademark Infringement

The best way to ensure that you’re not unintentionally using another business’s trademark is to search for different domain names related to the one you want. When you register a domain name under a .com or .org site, you’ll usually discover which ones are taken. However, for a more comprehensive database, you can check the U.S. Patent and Trademark Office’s website for trademarks and domain names.

If you do find a domain name that is similar to the one you’d like to use, you may still use a similar one – as long as you do a little homework first. Look at the other company’s site, and ask yourself:

  • Could a casual user reasonably confuse this product with mine?
  • Is their name unique to their branding? For example, Apple computers make the use of “apple” distinctive for electronics, but you’ll see any number of domain names that contain the word apple that have nothing to do with computers (and everything to do with apples)
  • Will your goods or services be a direct competitor for their goods and services?
  • Is the other name well-known?

If you’ve answered “no” to all these questions, then you’re probably in the clear. However, in cases where a simple mistake could end up in legal action, it’s always better to speak with a patent attorney.

What Can I Do If My Trademark Is Used By Another Entity?

If you’ve spent time and effort building a brand including your trademark only to find it already in a registered domain name, you have options. You may choose to take the matter to court and seek a cease-and-desist from the offending company, or petition for the company to stop the use of the trademark and domain name altogether.

You may also choose to negotiate for the purchase of the other company’s domain name. Sometimes, people are known as “cyber squatters” will register domain names associated with well-known businesses and ask lofty sums for these names. If you can prove that this is the case with your contested domain name, then that “squatter” may be court-ordered to turn over the domain name to you. In these cases, having a good attorney can help you protect your business.

Wrapping Up

Find your premium domain.

Choosing a domain name that doesn’t leave you open to a case of trademark infringement is important. Likewise, protecting your trademark and branding from infringement can be essential to maintaining the good name of your business.

If you’ve found yourself in a situation of trademark infringement, you have options. At VPN.com, we can help you secure the right domain name to represent your business and protect your intellectual property.

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