Technology Marketing by Tatum MarketingJust another WordPress weblog

Quick survey: When you’re searching for that perfect domain name — easy to type, easy to remember — do you:

a) Never factor trademarks into your domain name search

b) Sometimes consider trademarks, but only if the domain name you want looks and/or smells like a well-known trademarked name

c) Always perform an exhaustive search in the USPTO trademark database prior to buying any domain name.

Judging by the number of confusingly similar websites on the net, I’d be willing to bet that most people answer a) to this question.

But what if I told you that even c) won’t completely protect you from legal tangles with trademark owners? That’s right, the USPTO’s trademark database is just the first of seven exhaustive steps one must take to avoid buying a domain name that conflicts with a trademark owner’s rights.

If you’re a website owner reading this blog, you might be interested in an upcoming story I’m writing for Website Magazine. The working title, “How to Pick a Domain Name that Keeps You Out of Legal Trouble” explains in layman terms trademark law, the types of trademarks that exist, and due diligence a website owner should perform prior to buying that coveted domain name.

Through my research for the story, I was surprised to learn that even without official, federal protection, any business that uses a mark for interstate commerce, with or without the ®, ™, or SM symbol, has priority over a domain name owner.

I’ll say it again: You don’t need to have a trademark filed with USPTO to have trademark rights. A wildcard of sorts, these common law trademarks protect anybody that uses a name for interstate commerce. What does this mean for the unsuspecting website owner with a confusingly similar domain name? They can be forced to turn over their domain name and pay restitution to the common law trademark owner.

Of course the trademark owner needs to prove they were using the name before you, and they need to prove that your domain name has the potential to create confusion in the marketplace, but they can certainly make your life miserable in the process, and take away all of the sweat equity invested in your website — from keyword-rich content, to incoming links, to optimized landing pages and conversion forms — if they win.

If you’re interested in the full story, drop me a line and I’ll let you know when it’s officially published.

Sue Anderson
Marketing Lure, Inc.