Legal Question in Business Law in California

Trademark name duplication

My question is probably a simple one, and involves avoiding a lawsuit. Like lots of other people, I am trying to invest by buying internet domain names. One of the first things they tell you, is that you must check for trademark infringement.

My question is, how do you know when you are infringing on a trademark? I have looked up names on the Tess trademark system, and sometimes see the same name used several times, or see it listed only once. For example only, I want to register the name ''mirrors.com'' on the internet (not as a trademark, but as a domain name only),but see that someone already has Mirrors registered as a trademark.

I have read something about ''generic'' words being trademarked, but don't quite understand. Does the term ''standard character claim'' on the Tess site have anything to do with it? Why is there sometimes many different trademarks, by different people, listed for the same name, again just for example, say ''mirrors.''

Can you please clarify this for me?


Asked on 5/16/04, 9:50 am

2 Answers from Attorneys
Michael Stone Law Offices of Michael B. Stone Toll Free 1-855-USE-MIKE

Re: Trademark name duplication

Alas, there are few "simple" legal questions which is why we lawyers make the big bucks. Likewise, there are no simple ways to determine whether your proposed domain name purchase does or does not infringe someone's trademark. Trademark rights vary geographically and according to the type of product or service. You can purchase trademark searches online and for varying fees; the searches are varyingly complex. Note that somebody (a mirror sales outlet) has already registered the domain name "mirrors.com". Unfortunately, you are coming in very late in the game as far as finding unused domain names, most of the obvious ones are taken. Also, the passage of various anti-"cybersquatting" laws has made it much more difficult to profit in this manner. I wish I had had the foresight to register "sex.com", "business.com", and "jello.com" back in 1994.

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Answered on 5/16/04, 11:49 am
Jonas Grant Law Office of Jonas M. Grant, A.P.C.

Re: Trademark name duplication

Probably not the answer you want to hear, but... I agree with Mr. Stone. It's a case by case basis. Ideally, for each name, you would have your intellectual property attorney order a comprehensive (not just TESS) trademark search and then have him interpret the results and provide legal advice and guidance based on his understanding -- based on experience and training -- of these results. My fees for these searches and consultations start around $500, though for a package of trademark investigations, a lower rate can be negotiated - see my website at www.incorporatecalifornia.com for more information on intellectual property law, my law practice, contact information, and rates/fees. Best of luck.

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Answered on 5/16/04, 5:55 pm


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