Posts Tagged ‘Trademark’

Trademarks, Domain Names & Cybersquatting

Monday, March 9th, 2020

Like peanut butter and jelly, trademarks, domain names and cybersquatting all go together.  Every analysis begins with  trademark rights.  I order to make a claim for cybersquatting, and you have to have trademark rights in a word or phrase.  If that word or phrase is also a domain name, you can protect the domain name using your trademark rights.

Trademark Rights & Confusion

A trademark or service mark is generally a word, phrase, symbol, or design, or a combination, associated with a company, goods or services that identifies and distinguishes the source of the goods or services from third parties, including competitors.  A service mark is related to the source of a service rather, than a source identifier for goods.

When comparing the rights of two companies to a mark, the key test is a “likelihood of confusion” between the marks.  The likelihood of confusion is more likely to be an issue when the competing marks are similar, and the goods and/or services between the two competing users are related.  Any variations of words or letters that create a likelihood of confusion will result in a contest on trademark rights. the first to use the mark in commerce typically wins, even if the mark is not registered with the USPTO.  Further,  two identical marks can coexist, so long as the goods and services are not related.

Trademark Issues & Domain Name Use

Domain names are not necessarily trademark protected.  A trademark identifies goods or services as being from a particular source. Registration of a domain name does not create trademark rights. If the domain name is an identifier of source, and meets the tests for non-domain name trademarks, or matches your trademark, then you can protect it,.

Cybersquatting Domain Names

Cybersquatting is the registration of a domain name with a bad faith intent to profit from and existing trademark owner related to that owner’s pre-existing trademark rights. Cybersquatting can also occur when you ‘use’ or change use of a domain name or website hosted on a domain name, if the change in use starts to create a likelihood of confusion. Finally, trying to sell a domain name which is confusingly similar to a trademark owner can be powerful evidence of bad faith intent to profit.

411Pain Trademark Owner Wins $5 million Judgment and Permanent Injunction Against Competitor in Trademark-Infringement Lawsuit

Friday, July 2nd, 2010

Broward Rehab Centers, Inc. (BRC) the owner of the federally registered 411PAIN trademark (U.S. Reg. No. 2,621,497), recently won a lawsuit against competitor 888-444-PAIN, Inc. The judgment awarded BRC $5,000,000 in damages and a permanent injunction against 888-444-PAIN, Inc. from using ‘411’, ‘PAIN’ or any confusingly similar variation thereof. trademark infringement lawsuit

The court found that BRC’s 411PAIN trademark is distinctive and has acquired consumer recognition and symbolizes the goodwill that 411PAIN has created amongst consumers looking for information about auto accidents, slip and fall accidents and other types of accidental injuries throughout the United States.

On their BusinessWire article Broward Rehab Center, Inc. (411PAIN) Obtains $5 Million Dollar Judgment and a Permanent Injunction against Competitor Using 444PAIN, BRC/411PAIN provides readers with a short history of the company;

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