Trademark Domain Infringement

name infringement

[digitalspyders]

Question.

I have a client that has a domain name registered for example purposes called pro-painters.com and offers professional painting services. Let's say they registered the name in 2000.

Two years later some other guy registers pro-painter.com and offers the exact same services to compete against them to hope he gets traffic from people that can't type.

Pro-Painter Inc. is a registered corporation.

What if any legal action can be taken to have the competition surrender the singular version of the name?

[digitalspyders]

Is this a hard question?

[Webwork]

Yes it's a hard question, for a variety of reasons, including a lack of greater detail, which would be unwise to put forth in a public forum as it might be used against you or your client's interests in any future legal proceeding.

Additionally, members either soliciting or offering specific legal guidance in the forum is against the TOS.

Dropping specific website names, except in the case of authority sites, is also a problem.

Sorry to disappoint but there's good reason for these policies.

You might want to take the time to read the TOS and each forum's charter. It's a bit of a legal education in itself.

Lastly, don't confuse copyright with trademark. They're quite different. If you're in the US then take some time to do some background reading at Copyright.gov and USPTO.gov. Each website offers material intended to help laypeople understand the importance and operation of trademark and copyright.

[luckychucky]

Before anything gets removed: for broad, general info about the fundamentals of trademark law, you might want to read about the distinction between so-called "generic" or "descriptive" terms versus "fanciful" terms. Nolo's a nice free info source, btw.

If a mark is so fanciful (eg: Kodak. Exxon. Polaroid) that from the mark itself one could have no idea what the actual product or service offered under the mark is, then it's usually considered a strong mark.

Marks that are merely generically descriptive of the product or service, however (eg: FarmGrown Carrots, ClearView Windows) are considered to be a lot weaker. Interpretation of just how weak can be a matter battled out in court or arbitration.

Legal advice isn't allowed, so let's just say it deosn't take a great mental effort to draw some obvious conculsions regarding the generic ubiquity of 'Professional Widgeters' and 'Pro Widgeting'...

[sandyeggo]

i think the name is too descriptive anyway, and realistically there are probably many many "pro painters" companies out there.

But if it is hurting your business you might want to call a lawyer. If you call the state Bar association in your area they will direct you to attorney that is in the field required, and they usually give you a half hour free consultation to boot. You can get some free advice from someone much better than from one of us guys who sometimes thinks he is an attorney (like me ;-)

[digitalspyders]

Hi,

Thanks for the advice. pro-painters.com is just mearly a fictious name for example purposes. I guess I should have used quality-widgets.com

[BigDave]

Since those are awfully descriptive, they sure don't seem like they are likely to stand up in a trademark fight, unless you can show the intent to infringe on the mark.

Then there are all the rules about geography and such.

If I have BigDave's Pool Service here in Washington (a bad business to be in up here) and someone else has a BigDave's Pool Cleaners down in Florida, I would not have much luck in getting their domain name pulled, even though someone in Washington might mistype my domain name.

[digitalspyders]

What would you say if the companies were web based that offered the same web services in which one company started up years before and was slow on the ball to register the singular version and then along comes the other guy using the singular version in order to steal customers that type in the url wrong. The main company is incorporated by it's name. Any leg to stand on then?

[luckychucky]

If the name's generic, probably not.
If it's fanciful and totally unique...maybe.

wholesalewidgets.com can't stop a wholesalewudgets.com
But eBay might be able to stop an eBae.
Could eBay stop an eBait or eBuoy? If those aren't auction sites, it could be a grey area, and off to court they go.

Some of the usual criteria:
Does the mark stand on its own, is it fanciful, unique, strong?
Has it become firmly established in the public mind and specifically associated only with the products or services of its owner?
Does the competing variant create a likelihood of confusion in the public mind?
Is the similar domain name a deliberate attempt to confuse, or just coincidental?
Is a similar product sold under the confusing mark?
In the past, has the trademark holder already vigorously defended and policed the mark against any misuse?

Even strong trademarks aren't bulletporoof, if they are used so frequently in common language that they morph into becoming generic. Witness former trademarks ASPIRIN, HEROIN, ZIPPER, THERMOS...