Legal Question in Intellectual Property in California

Re: using a .com name that part its word is trademarked

Without knowing what name you want to use and how similar it is to the other trademark, it is difficult to answer your question. Rulings by the U.S. Patent and Trademark Office are specific to an individual case and take into account a number of factors.

In general, the basis of trademark is to identify the origination of a good or service so the public is not confused. If your product or service, for instance, are not in the same general category as the other trademark, you may be able to use the same name. And, generally speaking, whoever gets there first gets the trademark.

The use of web domain names, however, is a bit trickier because the range is worldwide and a particular combination of letters leads to a unique web site. In the past couple of years, in domain name disputes between companies having the same or similar names (even in different categories of goods), Courts have tended to give preference to the biggest, most widely-known trademarks even where some other business got there first.

If, however, you and the other trademark holder are not trying to use the exact same name and your trademarks are truly different, you may not have a problem.

Given the current climate of Internet domain name law, you could save yourself money and grief by consulting with an attorney who can advise you specifically on whether your use is likely to cause a problem before you put up your web site.