Can I register a trademark that has been registered by someone else as a domain?

[mhkatz]

What is the name of your state (only U.S. law)? Maryland

I have come up with the perfect brand name for a product I will be introducing in the next few months. For the sake of argument, lets call it the "PerfectWidget". I have googled "perfectwidget" and nothing comes up. I have checked the USPTO trademark search website, and nothing comes up. However, when I checked the availability of the domain name perfectwidget.com, it showed that someone else has recently registered and parked the domain name. A google search of the registrant indicates that he participates (recreationally) in the activity that my product is used for, so likely he has an idea of doing business with a similar, possibly competitive, product. However, I realize it only costs like $12 to register a domain name, so I do not know how likely he is to act on his business idea or how far along he is on whatever his business plans are.

So my question is, how can I determine if it is safe for me to go ahead and brand my product "PerfectWidget". If I do this, I might go with a hyphenated version like "Perfect-Widget", since perfect-widget.com is available.

Thanks in advance for any thoughts on this!

 

[quincy]

What is the name of your state (only U.S. law)? Maryland

I have come up with the perfect brand name for a product I will be introducing in the next few months. For the sake of argument, lets call it the "PerfectWidget". I have googled "perfectwidget" and nothing comes up. I have checked the USPTO trademark search website, and nothing comes up. However, when I checked the availability of the domain name perfectwidget.com, it showed that someone else has recently registered and parked the domain name. A google search of the registrant indicates that he participates (recreationally) in the activity that my product is used for, so likely he has an idea of doing business with a similar, possibly competitive, product. However, I realize it only costs like $12 to register a domain name, so I do not know how likely he is to act on his business idea or how far along he is on whatever his business plans are.

So my question is, how can I determine if it is safe for me to go ahead and brand my product "PerfectWidget". If I do this, I might go with a hyphenated version like "Perfect-Widget", since perfect-widget.com is available.

Thanks in advance for any thoughts on this!

You could always contact the domain name registrant and offer to purchase the domain name from him. The registered owner will probably tell you then whether he has any plans to use the "PerfectWidget" name or not on a business or product similar to the one you are contemplating.

Otherwise, you can take a risk and go ahead and start your business using your preferred name (as long as you are confident your search of the name has been thorough enough to turn up not only any registered user but also any unregistered one).

You can register a variation of the domain name currently owned, using your preferred name, even if it is similar to one already registered (as long as it is not currently in use and directing consumers to a competing business, product or service).

Then, either now or once you have started to use your "PerfectWidget" as a trademark in commerce to identify your business and product, you might consider federally registering your trademark. Federal registration provides public notice that "PerfectWidget" is owned by you (among other benefits that come from registration).

I suggest you review your business plans with an attorney in your area. A personal review of the actual name you have chosen to use as an identifier for your business and product, and a personal review of all facts of your business and plans to market your product, can help to make sure you have covered all areas of legal risk adequately. This review now can help you avoid problems later.

Good luck.