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“Whether you are launching a new business or just a new brand, you can benefit from the intelligence in a search report.”

James McCarthy, Partner at Chicago-based McDonnell Boehnen Hulbert & Berghoff LLP is an expert on patent, trademark, trade dress, copyright, trade secret and unfair competition matters. He actively manages global trademark portfolios and develops brand building and protection strategies for his clients. James has counseled Fortune 500 companies, small clients and individuals regarding the procurement, enforcement and licensing of intellectual property rights. He has also conducted sophisticated trademark searches and rendered clearance and infringement opinions involving both patent and trademark law. He has participated in all phases of litigation before federal courts and the Trademark Trial and Appeal Board. James is an active member of the International Trademark Association (INTA).


BusinessInterviews.com: What should one consider, from a legal perspective, when selecting a domain name for a business or product?

James: Choose a domain that is consistent with your company name or one of your main brands. The branding implications here should be obvious – your company name and existing trademarks are the most likely to be associated with your company and the easiest to find online. From a legal perspective, if you are selecting a domain name for an existing business, you already have common law rights established through any prior use of your company name and trademarks.

Conduct a trademark clearance search. Whether you are launching a new business or just a new brand, you can benefit from the intelligence in a search report. The search results will allow you to assess whether any brand owners would be in a position to challenge your use of the selected domain name. The search is also a great tool to help you differentiate your name from other similar names.

Develop a domain name registration strategy. You should determine up front whether your business needs to register its domain name in a single top level domain or in multiple venues. Usually, a single domain (.com, .net, .org, etc) is sufficient. However, if your business has an international component, you may also want to consider registering the same domain names in other jurisdictions (e.g., .cn for China) or in some of the new pending top level domains (e.g., .camera, .construction, etc.). Finally, you should consider whether to register common misspellings of your domain name in order to assure that your customers find you easily.

BusinessInterviews.comWhat tips do you have on protecting a business’ domain names?

James: Establish a watch service. Businesses should have a formal watch service set up and conduct periodic on-line research. Watch services are relatively inexpensive (usually a few hundred dollars per year), and it provides ongoing research regarding what similar names are being applied for and/or registered in the jurisdictions of your choice. Conducting periodic on-line research supplements the watch services and should be used to detect new or expanding uses of similar names that might not be the subject of formal trademark applications.

Don’t fall for the scams. Once you have a domain name and an established web presence, you will inevitably get solicited by companies that will tell you about similar domain name registrations in other countries and offer to help you stop the registration. Most of the time, you don’t care about these. If someone is registering your domain name in China using the .cn top level domain, you do not need to challenge it immediately. You might want to add it to your watch, but you only need to initiate enforcement proceedings if the use of the domain adversely affects your business.

Get an intellectual property lawyer involved. In the long run, IP lawyers will probably save you money by helping you avoid mistakes and scams. They can also explain all of the options that are available if you need to initiate an enforcement proceeding against someone using your intellectual property.

BusinessInterviews.comWhat should I do if someone contacts me telling me I am violating their trademark with my domain name?

James: Call an IP lawyer. A lawyer will help you assess the strengths of the trademark owner’s claim and help you evaluate your options in responding to the letter. Believe it or not, this can be done within almost whatever budget you have.

Conduct an honest evaluation of positions. You need to understand both the strengths and weaknesses of your position and the trademark owner’s position. If you conducted a search before launching, you should not be surprised by the identity of the trademark owner. Figure out whether it makes sense to fight, compromise, or choose a new name.

Respond! Do not ignore allegations of trademark infringement. If you fail to respond, the trademark owner may file a claim against you seeking to have your domain name transferred. If you do send a response, the trademark owner will know you are serious. Sometimes this is enough to make the matter go away – if the trademark owner was just trying to bully you but doesn’t want to start litigation, you will either have better negotiating power or you could ultimately be able to rely on their silence to bar any later challenge.

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