Website Trademark Infringement: Everything You Need to Know
Website trademark infringement occurs when a domain name infringes on a registered mark or a name that a company is already using commercially.3 min read
2. Your Trademark Conflicts With Another Registered Mark
3. Your Name Isn't Distinctive
4. Avoid Common Trademarked Names
5. What Is a Domain Name?
6. Domain Trademark Infringement
7. Search for Existing Trademarks
8. U.S. Patent and Trademark Office
Website trademark infringement occurs when a domain name infringes on a registered mark or a name that a company is already using commercially. There are millions of websites online, so it's key to do your research before creating a URL in order to avoid infringement.
What Is a Trademark?
Trademarks are the content that identifies the source of a product or service — i.e., a logo, slogan, or brand name. In the U.S., this content is trademark protected as soon as it's used commercially. However, the U.S. Patent Office will only extend protections to content that's clever, memorable, or suggestive.
You may run into legal trouble for the following issues:
Your Trademark Conflicts With Another Registered Mark
If your trademarks could confuse customers about whether they're buying your company's products or services or another's, you could face infringement charges. In countries that practice trademark common law, such as the United States, the exclusive rights for the mark go to whoever used it first commercially. If a legal conflict is found to exist, the later user will probably have to stop using the mark and may have to pay damages to the trademark owner.
Your Name Isn't Distinctive
The Patent Office won't approve your application if it isn't unique and distinguishable. If you use an infringing name commercially, you'll have to stop using it or face legal action from the mark holder.
Research carefully before using or attempting to register a trademark. You can check the Patent Office's database online for free. In addition to a thorough initial search, you should continue to check your marks moving forward to properly protect them.
Avoid Common Trademarked Names
To avoid website trademark infringement, note that common phrases such as “Dumpster” and “Tupperware” are trademarked. Using these words in your own intellectual property constitutes trademark infringement. Registering a domain name with any of these words also counts as infringement.
What Is a Domain Name?
The first step to building a website is to register your domain name. This is the address that users will type to go to your site (i.e., “www.businessname.com”). Since it's an identifier of your products and services, it counts as your intellectual property. This also means that you may infringe on a pre-existing mark if you don't perform a trademark search before registering your domain name.
Domain Trademark Infringement
Trademark infringement occurs when you knowingly or unknowingly use trademarked content (or something that's too similar to protected content). If you use infringing content in your domain name, the mark holder can issue a Uniform Domain-Name Dispute-Resolution Policy. Through this policy, a domain name trademark dispute can be resolved by:
- Reaching an agreement.
- Taking the case to court.
- Canceling the domain name.
- Suspending the domain name.
- Transferring the domain name.
Note that even if you infringe accidentally, you can face legal consequences. This makes avoiding infringement difficult — there are millions of commercial domain names registered online, and you may have to change your URL in the future if you don't research carefully and thoroughly. You should also familiarize yourself with what constitutes infringement:
- Another individual or business must have rights to the mark, either through commercial use or official registration.
- The infringing mark must be used commercially.
- The infringing mark must present a likelihood of confusion. Determine whether your mark violates this rule can be complicated, but the basic idea is that your mark will confuse customers about whether they're buying your products or services or another company's.
Search for Existing Trademarks
Performing a trademark search is key to ensuring that your URL won't infringe on a company's protected content. The onus to do this is on you — the Patent Office will reject an infringing application, but it doesn't check existing domain names and it doesn't have anything to do with creating a URL.
In addition to searching for registered trademarks, you also need to check for identical and similar domain names. Here are two sources that you should take advantage of:
U.S. Patent and Trademark Office
Start with the U.S. Patent and Trademark Office. Though this won't show you URLs, it will help ensure that your domain name doesn't infringe on an existing mark.
With Trademarkia, you can search through a body of 7 million registered logos, names, and slogans. This includes marks in the U.S. as well as internationally registered content.
If you need help with website trademark infringement, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.