Stay Out of Legal Hot Water: Website Trademark Issues

Obviously, launching a website requires a domain name, and picking a domain name may be your first step toward trademark infringement.

You want to avoid trademark infringement if you don’t want to:

• take down your website to avoid litigation with a trademark owner or
• have the domain cancelled or transferred to a federally registered trademark owner through a UDRP procedure.

It’s an expensive hassle to have to redo and relaunch your website because your site’s domain and name infringes a trademark.

Before you pick your domain name, make sure you do a trademark search on the free federal trademark registry (TESS).   If a company with a similar business has registered a trademark for a similar name (not just identical), you may be committing trademark infringement when you launch your website with a name that would likely confuse consumers as to the source of the advertised goods or services — the standard for determining trademark infringement.

Also search Google for a similar business with a similar name.  They may be claiming state trademark rights.

Do not use a similar name if you want to be safe from taking a bath in legal hot water.

If the .com is taken, BEWARE.

Make sure you look and see what business, if any, is using the .com domain.  If a similar business is using the name as a trademark, you can’t just use the .net or .co, even though they may be technically available.  You can’t just spell the name differently or add the word “the” or “website” or “online” and use the same name with a slightly different domain.  (Note that really descriptive names can’t be used as trademarks. If the name is not being used a trademark, you can use it.  But tread carefully, this analysis may be difficult.)

Again, the standard for trademark infringement is “likelihood of confusion.”  The name doesn’t have to be identical to infringe!  If your website name sounds alike or the dominant part of the name is too similar, you may be infringing.

I know that picking a website name is hard.  If your brand is important to your company, dig deep and try to find a name that isn’t descriptive or overtly sugestive.  With a little effort, you may come up with a better name and a stronger mark.  And when you do, protect your website by registering your name with the Patent and Trademark Office.

Moreover, avoid copying other websites. Other parts of a website may also be protected by trademark law including the “look and feel,” logos, and important tag lines.

Avoiding trademark infringement is important to maintain the value of your website and avoid legal problems.

For related posts on picking a name see the following posts:

• How to Avoid Trademark Infringement When Picking Business and Product Names
• Consider Whether You Can or Want to File a Federal Trademark Registration

For more posts on website issues:

• My Website’s Software Foundation:  Do I Own the Code or Can I Sell My Site?