Anyone who owns or has registered more than a handful of domain names has probably owned one or more names that infringe on the trademark of another company, whether its intentional or unintentional. Figuring out what domain names are dangerous to a domain portfolio is a big part of doing business as a domain investor.
Sometimes blatant trademarks pose no threat because the trademark holder doesn’t seem to care, and other times seemingly generic domain names become issues when overreaching companies attempt to take domain names using the legal system – or threats of the legal system. You need to be aware of the risks involved with domain investing before jumping in head first.
On average, I receive a few emails a month that go something like this: “I own the domain name xyz.com, and I am not sure if it’s a trademark. What do you think?”
Although I would love to give my educated opinion when I get those emails, I almost always recommend that the person speak with a lawyer, since I have no legal experience. When I first started buying domain names around 2003, I registered some names that may have infringed on the trademarks of other companies. In fact, I received a couple of cease and desist letters. At different times, I reached out to Brett Lewis and John Berryhill who both gave me very good advice.
If you have real concerns about possible trademark names in your portfolio, it’s best to ask a domain lawyer rather than another domain investor. A domain investor may have some experience with trademark issues, but there’s no substitute for a legal professional. Just like you wouldn’t ask your dentist about a toenail problem, you shouldn’t expect a domain investor to answer your legal questions.
My first stop is always at http://www.uspto.gov. Then Trademark-Search Marks and New User Form Search (Basic).
Granted, it’s absolutely no substitute for an attorney but good for ballparking whether to take a chance or not. If there’s a lot of live marks then it throws up a red flag.
Another metric is the amount of marks in total, whether live or dead. If a phrase has a lot of marks it means that it’s at least popular, and has a chance selling in the future. Especially if all the marks are dead.
Fwiw.
I tried the search on http://www.uspto.gov and found some dead marks for one of my domain names. There were no live marks, so does this mean that you should not have any problems in the future … maybe?
If you want to spend money, call a lawyer.
If you want to potentially make money, call a domain investor 🙂
The timing of this post is interesting…
I recently started doing some phone system work, and I wanted to buy a domain name.
There wasn’t too much available, and I ended up getting UltiPhone.com and UltiPBX.com (Ulti as in ultimate).
Technically, I might have a problem, since UltiPhone has the word iPhone in there, but I believe that a company can’t claim use of a trademark unless it clearly is referring to their product or trademark, which in my case, it is not.
I plan to ask a friend who is a trademark lawyer about it just to make sure though…
I also own HPPrinterDriver.net, and that one is definitely an issue.
I’m trying to get rid of it for that reason, though I haven’t seen HP go after too many of it’s trademarks…
While this is undoubtedly good advice, it is vapid at best. If you’re sick, ask a doctor and not a friend. Ya, right!
I for one can’t afford to ask a doctor or attorney every time I have a question.
“I for one can’t afford to ask a doctor or attorney every time I have a question.”
@ Michael
If you have a cough, you can probably self diagnose. If you have a more serious health concern, you suck it up and see a doctor.
For the most part, a seasoned domain investor can make business decisions, but sometimes it’s necessary to ask (and pay for) a professional opinion. If you can’t afford to pay for legal advice when necessary, this probably is the wrong business to be in.
I can’t count the number of times I have asked an attorney about a legal issue.
Do not risk your business on information gained from “asking around” and getting opinions. That is generally a time waster.
Give a lawyer a retainer and call for this kind of advice. If you can’t afford it now, you will have to afford it and more later.
2 cents worth from 30 years entrepenurial experience.
I am represented by the top domain lawyer on this planet.
His advice has been rock solid, spot on.
If you need world class advice and protection
try
ZAK MUSCOVITCH…
http://www.dnattorney.com/
btw..He just beat Google in a monster domain name matter!
RSS
A little common sense goes a long way.
@Yitzchok: I don’t think you have a problem with your UltiPhone domain, however, until you develop it, I wouldn’t park the domain as you don’t always have control over the types of ads being displayed. Just post a coming soon page under it. As far as your HP printer domain, I would delete it into oblivion.
The bottom line is that we all buy domain names to make money from them. Short of selling them to some other shmuck that doesn’t know better, you won’t legally make any money on someone else’s brand. If your in the grey zone, get a professional opinion. JMHO
Great post & great advice EL!
“I can’t count the number of times I have asked an attorney about a legal issue.
Do not risk your business on information gained from “asking around” and getting opinions. That is generally a time waster.
Give a lawyer a retainer and call for this kind of advice. If you can’t afford it now, you will have to afford it and more later.
2 cents worth from 30 years entrepenurial experience.”
Thanks !
Generic terms are supposed to be OK too. But how do you know what qualifies as a generic term?