While much of the law surrounding issues of Internet domain names and trademarks remains undefined, there are two principles that are well established, that you as a Startup need to understand:
- Registering a domain does not alone provide you trademark rights; and
- You can be sued by a trademark holder if your domain is likely to confuse consumers, or dilute a famous trademark.
Let’s discuss both points in a little more detail….
Domain Registration Does Not Alone Grant You Trademark Rights
You have a clever name that’s available as a domain name, and so you go ahead and register it. Does this mean that you have a trademark in said clever name? It does not. Registering a domain name alone will not provide you rights to prevent another party from using that name for its business or product. Without doing more, registering the domain simply means that that you have the ability (not even necessarily the "right") to use that specific Internet address.
In order to obtain trademark rights through your domain, you must use it in connection with the sale of goods or services, and it must meet legal standards to qualify as a trademark (which is the topic of a separate blog post, available here). Once you use your domain as a trademark, you then will have legal rights to prevent others from using that name (caveat: this is true, unless others were using the name before you).
Trademark Holders Can Sue You For Registering Their Trademark as a Domain
Even if the domain is available, know that you face a potential lawsuit if your domain is confusingly similar to an existing trademark owned by another person or business. For example, if you registered the domain www.looloolemons.com to sell fitness attire, you may be sued by Lululemon Athletica (www.lululemon.com). Lululemon, as a trademark rights holder, has the legal ability to stop the use of names that are likely to confuse consumers of fitness attire an accessories (and Looloolemons would almost certainly be deemed confusingly similar to consumers if used to sell athletic clothing).
Determining whether your domain would infringe on another’s trademark takes consideration of several factors, those of which included: 1) which mark was put to use in commerce first; 2) whether the domain name would confuse consumers regarding the trademark; and 3) whether the trademark is considered famous. The legal standards that would apply to a trademark dispute involving a domain name, are the same as would be applied in a standard trademark dispute.
What About Using Links to Another Website?
Typically using another’s trademark text to link to another’s website will not cause problems; however, be careful about using trademark symbols, which could cause issues. It’s always advisable to provide an appropriate disclaimer on your website in the case you do use outbound links that include another’s trademark. Also, it’s never wise to use another’s trademark to misdirect customers to your website, and don’t use another’s trademark in your programming code. Layman's rule of thumb: if it seems dishonest or deceptive, it’s likely to get you into trouble, legally speaking.
Using another’s trademark for the purpose to comment or criticize the other company is generally okay under principles of free speech. Keep in mind; however, that even if it’s legally permissible, a trademark owner may still harass you by threatening or filing a lawsuit – especially in situations where you’re selling your goods or services under the critical commentary of another’s trademark, or if you might confuse consumers.
Questions about obtaining trademark protection, or about using another’s trademark online? Please contact me at 303-396-0270, or by email at [email protected]. I'd love to hear from you!
Friendly Disclaimer: This blog post is for educational and informative purposes only. It contains general information that is not legal advice, and should not be considered or relied on as such.
