Trademark Application Questions

Trademarks vs. Service Marks

International Classifications

Specimens of Use

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Trademark FAQs

Application FAQs

Maintenance & Renewal FAQs

Internet FAQs

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Fictitious Name Research

Internet Research

Preliminary Research

USPTO Research

USPTO Refusals

TradeMark Express® vs. Other Search Firms

Corporate Research

Copyrights

Domain Names

Patent Research

WIPO Trademark Research


Trademark FAQs

What is a Trademark or Service Mark?
What are common law rights?
What is the USPTO - United States Patent and Trademark Office?
What is the Lanham Act?
What are the different types of marks?
What factors should be considered when choosing a strong trademark?
What is the difference between a trade name and a trademark?
What if I use my surname for my business name?
What about famous marks and dilution?
What type of research is recommended for a new trade name?
What research does the USPTO or State do?
What are the benefits of registering my trademark with the USPTO?
How does a State trademark differ from a USPTO mark?
Why a State Trademark - isn't a Federal trademark the 'best'?
What research is needed for a company interested in a State Trademark?
What is likelihood of confusion?
Why was my mark rejected by the USPTO as being too descriptive?
What if a competing mark is not enforced against me?
Can I get monetary damages when my trade name is used elsewhere?
How often should I redo my trademark research?
Can I monitor my trademark?


What is a Trademark or Service Mark?

A trademark is a word, symbol, device or any combination thereof, which is used to distinguish the goods of one person manufactured or sold by others, and to indicate the source of goods. Goods have Trademarks and services have Service Marks. Both are approached and researched in the same way, so any commentary about Trademarks usually applies to Service Marks as well. Trademarks and service marks may also include packaging, smells, sounds and architectural designs.

The purpose of trademark law is to ensure that consumers are able to rely on marks in exercising their preferences by prohibiting competitors from using marks in a way that confuses consumers about the source of goods or services.

What are common law rights?

Under Common law, rights are granted to those who have been using the mark the longest. Trade name rights exist for the common law within the mark's geographic trade area. Without registration with the U.S. Patent & Trademark Office for federal marks or with the Secretary of State for state marks, rights to a mark depend on the actual usage of that mark in commerce. In order to claim common law rights, use must be substantial and the "in the ordinary course of business", not merely for the purpose of reserving rights in the mark. Placing the mark on goods and making the goods available for sale is the most common means of using a mark in trade. For services, using the mark in commerce in connection with the sale and advertising of the services will suffice as use. Mere internal use, such as a company's use of the mark on samples sent to its sales representatives, will not suffice as use. Similarities are much more narrowly defined under common law for sound, appearance and meaning, than for registered or pending trademarks.

What is the USPTO - United States Patent and Trademark Office?

The United States Patent and Trademark Office (USPTO) is an Agency of the United States Department of Commerce that regulates the registration of patents, copyrights and trademarks. 

What is the Lanham Act?

In 1946, Congress enacted the Lanham Act, which is the federal trademark protection statute. It was created to protect consumers and competitors from a wide variety of misrepresentations of products and services in commerce. The statute holds liable, any person who utilizes false advertisements or deception to sell his goods or service. It also holds that any person utilizing a mark that may be confused for another's mark, is liable for damages to the owner of the original mark. In addition, since the Lanham Act is a federal statute, a trademark owner may bring an infringement law suit in a federal court.

What are the different types of marks?

There are essentially four different categories of trademark protection. At one end of the spectrum are generic terms which can claim no protection. At the opposite end of the spectrum are arbitrary or fanciful terms (often made-up words) which may always claim protection due to their uniqueness.

In the middle, which is where most marks fall, there are descriptive marks and suggestive marks. Descriptive marks, which are marks that allude to a product or service not specifically described in the mark, may obtain registration only if they have acquired a secondary meaning. Secondary meaning arises when the relevant consuming public has been exposed to the use of the mark, not just in its descriptive sense, but also as an indication of the source of the good or service. Under the Lanham Act, proof of substantially exclusive and continuous use of a descriptive mark on goods or services for five years may serve as evidence that the mark has attained secondary meaning.

Suggestive marks are those that require some measure of imagination to reach a conclusion regarding the nature of the goods or services provided. Suggestive marks are deemed inherently distinctive and can claim protection.

What factors should be considered in choosing a strong trademark?

From a legal standpoint, a distinctive trademark is important. The more original the mark, the less the chance of infringing the rights of others, and the easier it is to protect. The strength of the mark is an important factor in determining whether a mark infringes on another.

From a marketing standpoint, distinctive marks offer greater advantages in the long run. However, they also require more investment over a longer period of time in order to build customer recognition and meaning.

What is the difference between a trade name and a trademark?

A trade name is another way of saying a commercial enterprise has a product or service name or identification that is used in commercial trade. Trade names can include both registered or unregistered trademarks and service marks.

What if I use my surname for my business name?

If your mark consists of merely a surname, then there is a possibility of its being rejected by the Patent & Trademark Office on that basis alone. They look at each instance separately. Therefore, if your name can be seen as somehow distinguishable from that of a mere family name, you may have a better chance at registration. Distinction may be through actual use in commerce.

What about famous marks and dilution?

Famous marks are very well known product names and service names. Their rights are recognized to exist between ALL classes of goods AND services. Comprehensive trademark research always considers famous marks.

A dilution claim can be brought against anyone who dilutes the strength of the mark, either through blurring or tarnishment. A federal dilution claim may only be brought if the mark is famous. Under a state claim, the mark does not need to be famous. Blurring occurs when the primary owner has a strong mark that the public associates very closely with the owner as a business or source of goods and a secondary user uses the same name or highly similar name in dissimilar goods or services. Tarnishment occurs when the secondary owner's use of a similar mark or trade name casts the primary owner's distinctive well known mark or trade name in a bad light and thus "tarnishes" the luster of the primary owner's commercial image or reputation.

Since famous marks are granted such broad protection, a trademark owner, even if in a different industry, will be held liable for any dilution through blurring or tarnishment.

What type of research is recommended for a new trade name?

Although preliminary searches may be used as an initial screening, a comprehensive search will still be needed to determine whether any trade name is commercially available or trademarkable. Comprehensive research includes a search of the Federal and State Trademark databases, as well as common law databases.

What research does the USPTO or State do?

The USPTO and every State will only search its own records for possible infringement.
Any prior similarities or conflicts affect the applicant whether or not a registration is later achieved. First use trumps application. Ideally, searches need to be done BEFORE use.

The USPTO, for example, does not search any of the 50 States for common law use.
It is up to the applicant to search the State, Federal and common law, or first use data bases before applying for a trademark. 

States, for example, does not search Federal trademarks, any of the other 49 States or any of the 50 States for common law use. States will only check their own data bases for similarities and conflicts, when you apply for a trademark.

What are the benefits of registering my trademark with the USPTO?

Not only are you granted exclusive nationwide ownership rights for mark within its industry, you also gain the following advantages:

1)

The right to use the ® symbol, which notifies others of your Federal trademark rights, when finally registered. While a mark is pending registration, the SM symbol is used for services and ™ symbol is used for products.

2)

The right to expand nationwide, even if you are currently only selling within 2 states, thus interstate commerce, or between the USA and a foreign country.

3)

If another mark is infringing upon yours, you'll have access to Federal courts as well as a greater chance of recovering damages.

4)

The right to stop importation of infringing marks. The US Department of Customs receives a copy of the registration and will help enforce your trademark by blocking infringing named goods from entering the United States.

5)

Other entities will much more readily accept your trademark and first use common law rights when you have a registered Federal trademark.

How does a State trademark differ from a federally registered mark?

If only doing business in one State, then only a State trademark or service mark may be obtained. Only in-use applications may be applied for. States do not accept Intent-to-Use applications like the USPTO.

1)

While a State mark is pending or registered, the ™ symbol is to be used for goods and the SM symbol is to be used for services. The ® symbol is a USPTO symbol.)

2)

The right to expand statewide. The name will be waiting for you in other metros.

3)

If another mark is infringing upon yours, you'll have access to State courts.

4)

Other entities will much more readily accept your trademark and first use common law rights when you have a registered State trademark.

5)

Future Federal trademarks will not be able to be used commercially anywhere in your State, thus giving you a strategic advantage against larger competitors.

Why a State Trademark - isn't a Federal trademark the 'best'?

Federal Trademark registration is recommended if the business is offering its goods or services in at least 2 states OR between the United States and a foreign country, so that there is geographic room to grow. On the other hand, with additional territory, there is added responsibility to protect your mark - or lose it! There are certain businesses that will only operate within one, two or a few States, and do not have plans to expand outside of their present areas. For example, a restaurant with only a few locations in two States and has no plans to expand and/or franchise. In this case, two State trademarks will suffice because they will be easier and less expensive to protect, while still gaining ownership rights in the States they need for future expansion. However, if a trademark owner doing business in two or more states chooses to only register the trademark as state marks, the owner runs the risk of another owner registering the same trademark on a federal level. In this case, the owner with the state registrations will retain ownership rights to the trademark in registered states, but cannot expand outside of the registered states without infringing on the federally registered mark.

What research is needed for a company interested in a State  Trademark?

The Trademark research conducted for those companies interested in a State Trademark is exactly the same as for those companies interested in a Federal trademark - The US Federal & State trademark research. Here's why:

1)

The Federal trademark database has to be searched because those companies that have Federal trademarks have rights to the name throughout the entire country 

2)

The State trademark database includes all 50 states, though special attention is paid to those marks that are registered in the State of interest.

The type of Common-Law research, State or National, needed varies from company to company. It's recommended that a client speaks to one of our researchers to determine the exact research needed. National Common-Law research should be done most of the time, even if you are only operating within one state. The reasons for this are:

1)

If a company is incorporated in a State other than where it is based (e.g. incorporated in Nevada but actually operating in California), then there's the possibility of missing a use, if only conducting a State Common-Law search.

2)

If your company could be franchised (e.g. restaurants, video stores, supermarkets, etc), then you'll want to conduct a National Common-Law to find any other conflicting marks that may be franchising their services.

3)

If your mark is a good (i.e. a product), you'll want to make sure that there are no other services that may be selling within your trade area.

4)

If your mark is a service, you'll want to make sure that there are no products being sold within your trade area.

5)

With the Internet, many services and products are now offered nationally, thus possess first use common law rights nationally, even when operated from one small metro, like Key West, Florida.

State Common-Law research is recommended for very State specific services, where it is practically impossible for another related use to be regional or National.

What is likelihood of confusion?

Similarities may exist if there is merely the likelihood of confusion. If there is a possibility for the consumer to believe that another's product or service comes from a competing mark, then there is the likelihood of confusion between the marks. Courts will look at the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the similarity of marketing channels, and the degree of caution executed by the typical purchaser in order to determine if there is a likelihood of confusion on a case by case basis.

Why was my mark rejected by the USPTO as being too descriptive?

A trademark that is overly descriptive and lacks secondary meaning is considered to be invalid. A mark is descriptive if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods or services. This is because it would be unfair to allow a firm to prevent its competitors from informing consumers about the attributes of the competitor's brands by obtaining sole trademark rights to the descriptive terms. This also ensures the freedom of the public to use the language involved, without the possibility of infringement suits by the registrant against others who use the mark to advertise or describe their own products or services. If a firm does use a generic or descriptive term as a trademark, this makes it difficult for competitors to market their own brands of the same product or service.

What if a competing mark is not enforced against me?

If another mark does not enforce its registered or common law rights from 5 to 6 years, then it is said to acquiesce, or give up, the name to the latter party. This time period is arguable. Please request one of our trademark attorneys for a free consultation.

Can I get monetary damages when my trade name is used elsewhere?

When there is a violation against any mark registered with the U.S. Patent and Trademark office, the registrant of that mark (plaintiff) may be entitled to the recovery of profits obtained by the violator (defendant). The plaintiff is also entitled to recover 1) any damages sustained, through another's usage of his registered mark, and 2) the costs of legal action taken to end the defendant's usage of the mark.

How often should I redo my trademark research?

To protect against infringement, it is recommended to search your trade name every 2-3 years, or purchase a trademark monitoring service. Then, if another use is found, it will be new enough to make it easier to change their name. Allowing continued use makes it more economical to fight a trademark case, instead of recognizing the other mark and changing names. The over time increasing cost to change names makes it more likely another company will put up a trademark defense.

Can I monitor my trademark?

Yes! A mark may be automatically monitored on a daily or monthly basis for a small fee.
[Click here for more information on monitoring]


Application FAQs

What does a trademark cost?
Who can file a trademark application?
What if I live outside the United States?
Is legal research required by law?
What is needed to file?

What is the Supplemental Register?
What is the 'date of first use' on a trademark application?
What does it mean to be 'in commerce' on a trademark application?
May I file for a trademark BEFORE use?
What if I move?
How is a trademark displayed?


What does a trademark cost?

Federal trademark applications are $325 per class. Fees as of January 31, 2005

State Trademark & Servicemark Fees per class. Fees as of September 6, 2002

TradeMark Express® offers it's trademark application preparation services at half-price when you conduct your needed Trademark and Common-Law research through us.

For State Trademark and Servicemark Application, our fee is only $100.

If your research has already been completed elsewhere, then our Application Preparation will be $200. So, you can save $100 if you order your Application Preparation with your legal trade name research.

If you will be conducting business in more than one State - i.e. across State lines, or between the United States and another country, then we recommend a Federal Trademark or Servicemark application instead of multiple State Applications.

State Fee State Fee

Alabama

$30

Montana

$20

Alaska

$50

 

Nebraska

$100

Arizona

$15

 

Nevada

$100

Arkansas

$50

 

New Hampshire

$50

California

$70

 

New Jersey

$50

Colorado

$50

 

New Mexico

$25

Connecticut

$30

 

New York

$50

Delaware

$35

 

North Carolina

$50

Florida

$87.50

 

North Dakota

$30

Georgia

$15

 

Ohio

$125

Hawaii

$50

 

Oklahoma

$50

Idaho

$30

 

Oregon

$20

Illinois

$10

 

Pennsylvania

$52

Indiana

$10

 

Rhode Island

$50

Iowa

$10

 

South Carolina

$15

Kansas

$25

 

South Dakota

$50

Kentucky

$10

 

Tennessee

$20

Louisiana

$50

 

Texas

$50

Maine

$20

 

Utah

$20

Maryland

$50

 

Vermont

$20

Massachusetts

$50

 

Virginia

$30

Michigan

$50

 

Washington

$50

Minnesota

$50

 

West Virginia

$25

Mississippi

$25

 

Wisconsin

$15

Missouri

$50

 

Wyoming

$100

Who can file a trademark application?

The owner of a trade name may apply to register his or her trademark. Any person who, in good faith, intends to use a mark in commerce may apply to register the mark. All trademark applications are subject to prior commercial uses under Common Law and prior State and Federal trademarks, both pending and registered.

What if I live outside the United States?

The USPTO does not mail outside the USA. If one lives outside the United States, then a filing correspondent within the United States must be provided to serve as a domestic representative. Any person living within the United States can serve this function. United States citizenship is not needed.

Is legal research required by law?

Legal research is not a requirement to filing. The USPTO leaves it up to the business owner to take responsibility to ensure that they are not infringing on another's mark. However, it is highly recommended that you conduct research prior to filing. Research ensures that you are not submitting a name already owned by another entity.

This is the Declaration you will be required to sign when applying for a USPTO mark:

"PTO-Application Declaration: The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. º1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. º1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true."

What is needed to file?

An owner applicant must provide his/her name, address, drawing of the mark - if there is a logo design, goods or services description and filing fee. Without these elements, your application will be returned unprocessed with your fee. The owner may be an individual, corporation, partnership or other legal entity.

What is the Supplemental Register?

The Supplemental Register is reserved for those marks that may be descriptive, generic and/or geographic in nature.

What is the 'date of first use' on a trademark application?

For either a Federal trademark or a State trademark, the date of first use is the date the mark was used in intrastate or interstate commerce anywhere.

What does it mean to be 'in commerce' on a trademark application?

To be 'in commerce' means that one's trade name is being used in commercial transactions either in one place for a State trademark application or for a USPTO application, between States or between the United States and a foreign country.

May I file for a trademark BEFORE use?

If you plan to use a new trade name in interstate commerce (between two States), or between the United States and another country, then an Intent-to-Use (ITU) application may be filed. This is the same form as the In-Use application. You must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on "intent to use," you must later file another form called the "Allegation of Use" to establish that use has begun. 

By filing an ITU application, the applicant has 6 months after receiving the Notice of Allowance from the USPTO to use the mark in interstate commerce. If the applicant has not used the mark in commerce during the 6-month period, the applicant may file for an "Extension of Use", provided good faith efforts have been made to use the mark in commerce. Extensions are in 6-month increments, up to 3 years. For each Extension of Use filed, there is an additional filing fee of $150 per class.

What if I move?

Address changes must be made in writing, including the application's serial or registration number, to the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513.

How is a trademark displayed?

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.


Maintenance and Renewal FAQ

How to protect your mark from infringement or dilution?
What symbol (™, sm or ®) should be used?
What is proper usage of a trademark?
How does a trademark owner monitor for infringement?
How to avoid infringement or dilution of third party marks?
When are the Federal trademark renewal years?
When are the State trademark renewal years?
What are the affidavits that I need to file in order to maintain my registration?
What are the details of the Section 8 Affidavit?
What are the details of the Section 15 Affidavit?
What is the Section 9 Affidavit?


How to protect your mark from infringement or dilution?

Following a few basic guidelines, outlined in the questions below, can ensure that a trademark maintains its distinctive characteristic and can prevent a loss of trademark rights.

What symbol (, sm or ®) should be used?

These symbols can be used as a means of claiming legal rights to the trademark. It is not required to have an application pending on a federal or state level to use the ™ or "sm" symbols. The ® may only be used upon completion of registration with the USPTO. If the ® is misused, the USPTO can deny attempts for future registration.

What is proper usage of a trademark?

Proper usage of a trademark can ensure that the mark will not become generic as well as prevent loss of trademark rights through abandonment or misuse. Trademarks should always be used as an adjective followed by the generic name of the product or service. Trademarks should never be pluralized. In addition, trademarks should never be used as verb or made possessive. Following these basic guidelines will help strengthen the mark as a whole.

How does a trademark owner monitor infringement?

The purpose of monitoring for trademark infringement is to avoid the "why didn't you do anything" situation. Courts are more likely to excuse or minimize the impact of third party use if the trademark owner can demonstrate that it was actively pursuing other third party users.
Trademark owners can monitor for potential infringers by having Federal and State trademark research done every year. It is important that if potential infringers are discover, that the trademark owner promptly notify potential infringers. Traditionally, a cease and desist letter will accomplish this, however, if needed a trademark owner may choose to pursue further legal action and seek damages.

How to avoid infringement or dilution of third party marks?

To avoid consumer confusion, any third party marks should be clearly identified with the appropriate ™, sm or ® symbols. Attribution should be given to the appropriate owner of the trademark and a general disclaimer should be included in the terms and conditions of the website.

Under fair use, an entity may use a third party's trademarks descriptively or otherwise in a manner that refers to the actual source of goods or services. A trademark may not be used if it creates a likelihood of confusion as to the affiliation or source or dilutes or disparages the trademark.

When are the Federal trademark renewal years?

A Section 8 Affidavit must be filed between the 5th and 6th year of the registration date; the USPTO fee is $100. A Section 8 Affidavit must be filed every 5 years to ensure the active status of the mark. At the same time a filing of "Declaration of Incontestability" may also be filed to declare incontestability of a mark for a USPTO fee of $200.

The mark then needs to be renewed between the 10th and 11th year after initial registration with a Section 9 Affidavit plus the USPTO fee of $300. After that, marks are renewed every 10 years, thus the 20th and 21st year after initial registration, and so on. 

However, there are other steps in the interim, namely, filing the necessary affidavits.

When are the State trademark renewal years?

Most States are similar to the Federal registry in that the mark needs to be renewed every 10 years. Please call us for a free trademark consultation for your State.

What are the affidavits that I need to file in order to maintain my registration?

An affidavit is a post-registration form that the USPTO requires from all applicants. Each affidavit has a specific purpose:

1)

The Section 8 Affidavit assures the USPTO that the mark is actively in use. The filing of this form is to prevent inactive marks from appearing on the register.

2)

The Section 15 Affidavit is a Declaration of Incontestability.

3)

The Section 9 Affidavit is the renewal application.

What are the details of the Section 8 Affidavit?

The Section 8 Affidavit is a form that must be filed with the USPTO in successive intervals. The current rate is $100 per class. This form is a declaration of continued use and its existence is to prevent inactive marks from staying on the register. The time schedule is as follows:

1)

Between the 5th and 6th year after the registration date - for an extra $100 per class, you may file within the six-month grace period.

2)

Between the 9th and 10th year after the registration date - for an extra $100 per class, you may file within the six-month grace period.

3)

Each successive 10-year period thereafter.

FAILURE TO FILE THE SECTION 8 WILL RESULT IN CANCELLATION OF THE REGISTRATION.

What are the details of the Section 15 Affidavit?

The Section 15 Affidavit is an optional form that may be filed with the USPTO if the mark has been in continuous use on the Principal (not Supplemental) Register for 5 consecutive years after registration. The fee is $200 per class.

The purpose of the Section 15 Affidavit is to declare incontestability of the mark. As the USPTO states: filing this affidavit means "the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions."

Simply put, incontestability ensures that the applicant's mark "cannot be challenged on the ground that the mark is merely descriptive." 

The Section 15 Affidavit may be filed alone or in conjunction with the Section 8 Affidavit. Both forms can be accessed here

What is the Section 9 Affidavit?

This form is generally referred to as the Renewal Application and must be filed every 10 years. Since the time for filing Section 8 coincides with the Section 9, there is a combined form. The current rate is $400 per class (plus the Section 8 Affidavit filing fee of $100 per class). For an extra fee of $200 per class ($100 for the Section 8 & $100 for the Renewal Application), you may file, within the six-month grace period.

FAILURE TO FILE THIS DOCUMENT WILL RESULT IN CANCELLATION and/or EXPIRATION OF THE REGISTRATION. 


Internet FAQ

What is ICANN?
What is cyber squatting? 
What if I suspect someone of having registered a domain name with the intent to divert customers away from my web site?
I just registered my domain name and the agreement I signed with my registrar had the letters UDRP. What is the UDRP? 
I have registered my domain name, which is also my trade name, can I apply for trademark registration as 'in use'? 


What is ICANN?

ICANN is the acronym for the Internet Corporation for Assigned Names and Numbers. ICANN has the responsibility for IP address allocation, protocol parameter assignment, domain name management and root server system management. It is performed by IANA - Internet Assigned Numbers Authority - Internet Assigned Numbers Authority, which is under contract with the U.S. government.

What is cyber squatting?

Effective November 29th, 1999, the Anti-Cybersquatting Consumer Protection Act (ACPA), an amendment to the Trademark Act, went into effect to protect consumers from being confused by domain names that are 'confusingly similar' to already established business names. When a registered domain name intentionally utilizes names that are misspellings of distinctive or famous names for the purpose of diverting consumers to their web sites through a slight spelling or typing error to reach an unintended site, it is called 'cyber squatting'. Cyber squatting is bad faith, intent to profit registration of domain names that may infringe (violate the rights of) existing trademarks. A domain name can be deemed 'confusingly similar' if it is exactly the same, has slight misspellings, sounds or looks the same, or means the same within a given context.

What if I suspect someone of having registered a domain name with the intent to divert customers away from my web site?

If registered in bad faith, other than in good faith which refers to those who unknowingly register a domain name that infringes upon a registered trade/service mark, then there is intent to profit from the goodwill of the violated company and a cease and desist letter may prevent them from further usage or, in some cases, further legal action can and should be taken to prevent the cyber squatter from operating under his/her current name.

I just registered my domain name and the agreement I signed with my registrar had the letters UDRP. What is the UDRP?

UDRP is the acronym for Uniform Domain-Name Dispute Resolution Policy. Every domain name registrar accredited by the ICANN must incorporate the UDRP into each individual domain name registration agreement. This effectively binds the registrant with the registrar to submit to mandatory administrative proceedings initiated by third-party complainants. The scope is limited solely to abusive registrations of Internet domain names. Complainants must be able to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights and that the domain name has been registered and is being used in bad faith.

I have registered my domain name, which is also my trade name, can I apply for trademark registration as 'in use'?

No, registration of a trademark as a domain name, without more, is not considered a commercial use of the trademark and therefore is not registerable as 'in use'. When a domain name is used only to indicate an address on the Internet and not to identify the source of specific goods or services, the name is not functioning as a trademark. Goods or services must be associated with any trade name to achieve common law rights or a registered trademark.


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