A prospective domain name owner can eliminate or substantially reduce the risk that a domain name will infringe upon a protected trademark or service mark by performing proper due diligence. Domain name trademark infringement can occur if your domain name infringes upon a protected trademark that is being used in commerce. Since the information in this post is geared towards readers seeking to engage in commercial activities through the Internet, it is essential to avoid pitfalls before you purchase or register your desired domain. Most readers will be looking to acquire a domain name that either identifies your business (or some good or service you intend to sell) or at least relates to your product and/or service.
You should not register or purchase a domain name without first determining if the desired domain is identical or confusingly similar to an existing trademark or service mark. If your domain name is likely to cause consumer confusion in the market place, it may in fact infringe upon that mark. For purposes of domain name protection, you will need to understand what constitutes a likelihood of consumer confusion. In essence, a likelihood of consumer confusion exists if use of a trademark in connection with the sale of a good (or use of service mark in connection with offering a service) constitutes infringement if it is likely to cause consumer confusion as to: i) the source of those goods; or ii) as to the sponsorship or approval of such goods.
You should perform the following steps before you acquire a domain name to determine if the name could potentially infringe upon another trademark or service mark:
Step 1: Conduct a search on several popular search engines (Google, Bing, etc.) to determine if the desired domain name is being used to identify a business or the name of that business’s goods or services. Review each result that looks like it could possibly contain your desired domain name used to identify a business name (trade name) or the name of its goods or services. If you do find a business that identifies itself or any of its goods or services with a name that is similar to your desired domain, proceed carefully.
Step 2: Perform a search at Whois.net to see if there are any domain names that are identical or similar to your desired domain name or that contain identical or similar text. If your search results in any matches, you should examine each web site and the “whois” record for each hit. If you find a trade name or any actual goods or services that use your desired domain name, I suggest looking for another domain.
Step 3: Perform a search of the United States Patent & Trademark Office (“USPTO”) database called the Trademark Electronic Search System (“TESS”). TESS contains all federally registered trademarks and Service marks, all dead or abandoned trademarks and Service marks (previously filed) and all pending applications for trademark registration.
However, you should also hire a trademark attorney, or at least a reputable search firm, to do a national trademark, service mark, trade name and/or domain name search for you. A good search by a capable attorney or search firm will do a comprehensive search and give you a written report of the results. If the search results show that there are any identical or similar trademarks, service marks, trade names or domain names, you should seriously consider eliminating the domain name and purchase another.
Although I am an attorney, I do not concentrate my practice in the area of trademarks or trade names. I have seen firsthand the value in retaining a highly qualified professional to perform a search and provide you with a comprehensive opinion and recommendation. So, you should skip steps 1-3 and let your trademark attorney do it. Keep in mind that the question of whether a domain name will infringe on another trademark requires knowledge and interpretation of trademark law. In many cases, a desired domain name will not infringe on another trademark or service mark even if you find an identical or similar marks after performing a search. Domain name trademark infringement depends upon the facts and circumstances surrounding each particular case, and this is certainly not clear and should not be interpreted by non-professionals.