Blogger Law 101 — Episode Two
There’s a lot to consider when it comes to trademark law and branding your business and blog. But you can actually tread on someone else’s trademark rights the moment you purchase a domain name. Here’s how to stay out of trademark law trouble when registering a domain name.
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Episode Links:
- Trademark Office Main Page
- ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP):
- ACPA text (scroll down to subsection d)
- Haunted House 3-D Animation
- Buying a Domain Name Video Tutorial
I’d like to use a lawyer who is experienced with these issues. What should one do when a competitor takes a similar version of a domain name and forwards it to his/her site. Any suggestions on who to call?
Patsi, you’ve got mail.
And we’ll have a contact page for Samantha very soon… promise!
I am sooo gonna be sued… 🙁
Um… “Tubetorial” comes up empty on the “TESS” trademark search. ;P
BTW… awesome job, keep up the good work.
Ben, since we own the domains, and are using them, when we decide to register for a Federal mark it will be a snap. That is the proper order to go in, because you have to actually use a trademark before you can register it.
Samantha
Thanks for this presentation -which I discovered today 🙂
In my particular case, I registered the trademark only to find that a large US based company objects to it as being to similar to their trademark.
The have asked me to withdraw the trademark application
As a non US resident… If they take action as I am already using the domain name.. according to your presentation they cannot “get monetary damages” – only the domain name.
Can you confirm whether they can sue for legal fees?
Thanks
TomC
Great video covering the basics! I’m a trademark attorney and I do a lot of work in this area and I’d just add that in terms of the money if you’re a domain name owner who uses someone else’s trademark in your URL and ends up having to transfer it back to the trademark owner, the URL owner can get his out of pocket costs covered. I recently helped a client get back $3,000 from a large company that owned the brand contained in my client’s domain name (there was no bad faith in the registration)
You MAY use someone else’s trademark in your domain name or blog’s URL if it is relevant to the subject of your discussion and does not mislead people into thinking the trademark holder endorses your content. No one can block non-commercial uses of their trademarks (including critical commentary about the brand or parodies).
Courts have found that non-misleading use of trademarks in URLs and domain names is fair in several cases (e.g. Bally Total Fitness Holding Corp – for “ballysucks”. v. Faber and Bosley Medical Institute v. Kremer ).
Also, you MAY use someone’s trademark in your URL as long as you’re not making commercial use in the same category of goods or services that their trademark covers. Only “famous” marks like VICTORIA’S SECRET can block the use of their mark by others in ALL goods and services if the use actually dilutes the value of their famous brand. Thus, anyone can sell diesel fuel even though one company has trademarked DIESEL for jeans. Brazil is one of the ccTLDs that even uses a blacklist of famous marks and will not anyone register a URL without permission of the trademark owner.
Excellent article. A great tutorial on the issues. These issues are going to become even more relevant in the coming years as an online business presence is considered a “requirement” as opposed to an “option” in almost every industry.
So many complications wow
Never thought about it before. Good stuff. I have to lok into what I have…
Question, please-I have had a blog called Table for Five for almost 3 years. My URL is above. I signed up for Google Alerts for the phrase “Table for Five”, and found out that there is another blog with that same name, but a different URL, and it’s OLDER than mine. It’s also not a self-hosted blog but a free one on Blogger, does that matter?
What should I do? I have built up a reputation as “Elizabeth from Table for Five”, but if I try to trademark “Table for Five”, will I run into a problem of there being an older blog using that name? Does it help that I have the name in my URL and the other blog doesn’t?
I’ve been kind of agonizing over this which is why I googled how to trademark blog name, hoping for some guidance 🙂
I have a slightly different question. I registered a domain name 5 years ago in good faith of starting a business that just hasn’t taken off yet. Someone began registration proceedings for a trademark in 2008. All of my contact details in ICANN were up to date but this person did not contact me at the time. This person emailed me this morning and said she is planning to start using her mark and explained everything she had trademarked and copyrighted. If I purchased this domain name in good faith BEFORE she filed for the trademark, am I protected?
Thanks,
Elizabeth
If someone is using a domain in 2008, and I have my new business name trademarked in 2009, does that mean that the person using my trademarked name has to stop using it.
we are both using the name for exactly the same type of business but I got my name trademarked.
Also how do I go about getting my business name copyrighted? I have no idea how to do that!
A very nicely done “Intro” to domain name and trademark law, and that compliment is from a domain name lawyer. The danger with intros, is that to keep them simple, they are often inaccurate, but this video avoids that pitfall and provides a good “nut shell”. Of course, the intersection of domain name and trademark law gets most interesting in the “advanced” course, for example, what happens with descriptive domain names, or non-commercial use? Thanks.
Lawyers experienced issues like this are gold worth and believe me – they know it 🙂 Hourly wage $800 is not exception.
Thanks for the interesting overview, the video was very useful. Also enjoyed some of the banter in the comments! lol
If I have a domain name that is a registered product, but I am selling this exact product on the site that the trademark has, but am not affiliated with the manufacturer, what is the law on infringement?
Question: Are trademark use clearances from the owners of the trademarks required for use in this video? ie: Starbucks, Nike etc. or are they fair use as examples of noteworthy brands?
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Hi,
I trademarked the name of my company nationally and own it – Vpicutures. Someone esle owns the domain name and is not using it. (Vpictures.com) Can they charge me to use my own trademarked name?
Gay Venable
Vpictures
i like this posting, very interested
Hi, thanks for the interesting video – a great intro to how trademarking issues are something we need to bear in mind when choosing a domain.
Great video. I’m sure that most of us don’t take these things into account when searching for a domain name as it doesn’t seem necessary but it is definitely something to look out for initially rather than have to deal with the issue later. Thanks.
Damn she’s so hot!