Can I make someone turn over a domain name for trademark infringement?

The question of if use of a trademark in a domain name is trademark infringement is complicated. Typically domain ownership by itself is not a trademark infringement. Trademark infringement requires use in commerce that is likely to cause a likelihood of confusion. Thus ownership alone is not enough. Our trademark attorneys have handled multiple disputes over domain names.

In the late 1990’s and early 2000’s cybersquatting became a major issue in the U.S. and in the world. In response, the World Intellectual Property Organization (WIPO) instituted the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP allows for domain name transfer when the complained of domain is not being used in a trademark manner. The UDRP provides for transfer of a domain if the party claiming a transfer being made shows the following:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith

Typically the first prong is fairly easy to prove for the trademark owner. However, the second two prongs of the test are more difficult. Typically if the domain owner is using the domain at all for a business that is not related to the trademark, the trademark owner will have a difficult time proving a lack of rights or legitimate interest. A further issue in rulings under the UDRP is the requirement of bad faith. The UDRP Policy provides the following nonexclusive reasons for showing bad faith:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or

(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Thus if the domain owner has not done something to harm the trademark owner or to profit from the trademark owner (such as by selling the trademark owner the domain at an exorbitant price), it can be difficult to overcome a showing of bad faith.

If you are having issues as a trademark owner with a domain name infringing your trademark, or alternatively if you are a domain owner receiving allegations from a trademark owner that the trademark owner has rights, please contact one of our attorneys to discuss your options.

Trademarks and CBD

CBD has become very popular in recent years. In 2018 the Federal government removed hemp and hemp products from being a Schedule I drug. However, the Farm Bill did not legalize or allow for the use of CBD as a dietary supplement. Prior to the Farm Bill of 2018, the Trademark Office had been rejecting all CBD trademark applications as being unlawful as a Schedule I drug. Following the 2018 Farm Bill the rejection of CBD trademark applications stopped. However, the Trademark Office began issuing rejections of all orally ingested CBD trademark applications, including for dietary supplements, as being illegal under the Federal Food, Drug, and Cosmetic Act.

The Federal Food Drug and Cosmetic Act (FDCA) prohibits the introduction r delivery for introduction into interstate commerce of a food to which has been added a drug approved under the FDCA or a biological product that may qualify as a drug.

The Trademark Office now rejects trademark applications for oral CBD supplements and food as using a drug because a drug company received approval of a CBD containing drug (namely Epidiolex).

In June of 2020 the Trademark Trial and Appeal Board ruled that these rejections were valid trademark rejections. However, there is hope. Several bills to allow CBD as a supplement under the FDCA have been proposed in Congress. Further, the Trademark Trial and Appeal Board left the door open for an appeal having further proof that CDB was used as an oral supplement prior to Epidiolex.

The trademark attorneys at Shaver and Swanson continue to monitor this rapidly evolving trademark field. Please do not hesitate to contact us to discuss potentially moving forward with CBD or other herbal supplement trademark applications.

Is this trademark letter a scam?

Our trademark attorneys receive questions every week from clients asking if a letter they received requesting payment for a trademark renewal, trademark registration, or trademark database is a trademark scam. The answer is always either yes, this is a scam or well it may be an actual service, but it is completely superfluous.

All official correspondence regarding your trademark application or trademark registration from the United States Trademark Office will be sent by the Trademark Office to your attorney of record. These unofficial services or scams typically avoid sending trademark correspondence to a trademark attorney because the trademark attorney will recognize the letter as a scam or unnecessary trademark service. Our trademark attorneys have seen several recent scams that tell the trademark registrant their trademark registration is expiring, but the scam has the incorrect date or the incorrect registration number. This is a definite scam. Further information can be found on the United States Patent and Trademark Office’s website at .

A benefit of hiring a trademark attorney is that the trademark applicant will know all official trademark correspondence from the Trademark Office will go through the trademark attorney. Thus every letter the trademark owner receives can be discarded as a scam. However, if you still have questions please feel free to contact our office. Our trademark attorneys would be happy to tell you if the letter really is a scam, or if it is official. Also we can provide trademark deadline tracking for when you actually do have to pay a fee to the Trademark Office to renew your trademark registration.

Can I use a dead or cancelled trademark?

Trademarks that are listed as cancelled on the Trademark Office’s database are not always free for use. Trademark rights exist in three forms in the United States: common law trademarks, state registered trademarks, and Federally registered trademarks. A trademark owner may allow a registration to expire because they are not using it, by accident, or because they have other registrations that cover the same material. It is important to consult with a trademark attorney before you adopt an expired trademark, as opposed to after you receive a cease and desist letter from the expired trademark owner’s trademark attorney. The trademark owner may still have common law rights in the trademark or they may have alternate registrations that still arguably cover trademark owner’s rights.

How long does it take to get a trademark registration?

From the time a trademark attorney files your application it typically takes between three (3) to six (6) months for the Trademark Examining Attorney at the Trademark Office to examine your trademark application. If the trademark examining attorney does not have any issue with the trademark application, the application will typically pass to the trademark publication phase. The trademark examining attorney may issue an objection or rejection to your application over the form or substance of the application. If this occurs the trademark applicant will have six (6) months to either appease the trademark examining attorney’s form objections and to try and overcome any substantive trademark rejections, such as if the trademark examining attorney believes there will be a likelihood of confusion between your trademark application and a preexisting trademark application or registration.

At the trademark publication phase, the trademark application publishes for third party opposition. If no third party trademark users object to the application, it typically takes about eleven (11) weeks from the date of publication for the trademark application to issue into a registration. Our firm’s trademark attorneys have extensive experience in obtaining Trademark registrations.

My trademark application is being opposed what can I do?

After your trademark application is approved by a Trademark Office Examining Attorney, it publishes in the Official Gazette for 30 days for third party opposition.  During this time any third party that believes it will be harmed by the issuance of your trademark application can file an opposition to your trademark.  A trademark opposition is similar to a lawsuit, with a formal Notice of Opposition that serves the same function as a Complaint in a lawsuit.  After the Notice of Opposition, the trademark applicant has approximately thirty (30) days to respond or the opposition will be sustained and the trademark application will be deemed abandoned.

Many companies utilize trademark monitoring companies to monitor the Official Gazette as well as the Internet for third party use of potentially confusing trademarks.  These companies often zealously guard their trademark rights as trademark rights are maintained on more or less a “use it or lose it” basis.  These companies are often amicable toward a resolution that will allow you to continue to use your mark and even to obtain a registration.  We have negotiated many mutual consent to use and register agreements between our clients and third parties.  If you are faced with a Notice of Opposition or even a Notice of Cancellation, our trademark attorneys can assist you in resolving the situation or in fighting for your rights.  Please contact us to discuss your case.

Can I use the same business name as someone else?

We frequently are asked by clients or potential clients if they can use a trademark or business name that is the same as a pre-existing company.  The answer is that it depends.  Trademark law protects the source identifying function of a trademark, trade name, product trade dress, or any other “name, symbol, or device, or any combination thereof” that is “likely to cause confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  See 15 U.S.C. 1125.

Thus the typical test for trademark infringement is if there is a “likelihood of confusion” between the marks.  Each Federal Court of Appeals has developed its own test for likelihood of confusion; in the Ninth Circuit the test is called the “Sleekcraft Test” as the likelihood of confusion test for trademark infringement is set forth in the case of  AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).  The factors of the Sleekcraft Test are as follows (as taken from the Ninth Circuit Model Jury Rules):

(1) Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.

(2) Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.

(3) Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.]

(4) Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.

(5) Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.

(6) Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.

(7) Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.

(8) Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.

(9) Other Factors. (any other factors the jury may consider)

Typically the first four factors above are the most important factors.  If the trademarks are the same or very similar, the senior trademark is strong conceptually, and the goods are the same or very similar, there is a higher chance a court or the Trademark Office will find a likelihood of confusion.  Conversely if the senior trademark is weak and the goods are not related, there is a lower chance of a finding of a likelihood of confusion.  The likelihood of confusion test is a sliding scale that assesses all of these factors to determine if there is a likelihood of confusion between two trademarks (or event the same trademark on two goods).  Because this test is very factually intensive and requires a significant amount of legal analysis, we recommend that if you have a question regarding the selection of your trademark and if it creates a likelihood of confusion, to contact one of our trademark attorneys.

t-shirt slogans, designs, and trademarks

We are often asked by clients “can I trademark my t-shirt design?”

The answer to this question is that it depends.  Trademarks protect the source identifying function of a name, word, or symbol.  Thus if you use a name that identifies the source of your t-shirt or clothing, you likely can obtain a trademark registration on the name.  However, on the opposite end of the spectrum, if you are using a design or slogan as a purely ornamental feature of the t-shirt, the trademark office likely will reject your trademark application as being ornamental.  The Trademark Manual of Examination and Procedure (TMEP) provides the following guidance on the spectrum of ornamental registrations:

  • (1) Ornamental matter that serves as an identifier of a “secondary source” is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation “NEW YORK UNIVERSITY”) can convey to the purchasing public the “secondary source” of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated.
  • (2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods.
  • (3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
  • (4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register.

If you do receive an ornamental rejection, the United States Patent and Trademark Office provides guidance for overcoming the rejection.  Additionally, the attorneys at Shaver and Swanson have successfully argued against ornamental rejections for clients in prosecuting trademarks in the Trademark Office and are available to assist you with prosecuting your trademark application.

If you do have a new design to utilize on your t-shirt, it may also be possible to seek copyright protection for your design, but this applies only to designs as opposed to slogans, phrases, or words.

Is this trademark bill I received a scam?

We frequently are asked by clients if a trademark bill they received in the mail or through fax is a real bill.  Typically these direct bills are scams, but if you receive a notice you should double check with your trademark attorney to be certain it was not an error on behalf of the U.S. Patent and Trademark Office or a miss-sent communication from a foreign trademark office.

When we file your trademark application with the U.S. Patent and Trademark Office, we designate our office to receive all further official correspondence.  While we list our office for correspondence, the Trademark Office publishes your trademark application, along with your address, which third parties can obtain through the Trademark Office’s website.  There are a wide range of different third parties with different offered “services” from including your trademark in their publication to being a direct scam in which the third party seeks payment from you for some alleged service it provided.

The U.S. Patent and Trademark Office maintains a list of non-USPTO solicitations here.  If you are contacted by any of the listed companies, do not pay the bill they send you.

In sum, you should view any third party trademark bill as being a scam unless proven otherwise.  Do not pay any “bill” you directly receive without first discussing the bill with your trademark attorney.

State and Federal Trademark Registrations

Should I get a state trademark registration or a federal trademark registration?

Both state trademark registrations and federal trademark registrations are very beneficial to both individuals and companies.  State trademark registrations typically provide constructive priority throughout the state in which the registration is obtained.  Similarly, federal trademark registrations provide nation wide constructive priority.  A company or individual should typically obtain a State trademark registration when they are involved in intrastate commerce meaning they operate solely within one state and/or are local companies.  Typical examples would be small, non-online stores, lawn care companies, beauty salons, and local restaurants and bars.

Obtaining a federal trademark registration requires that the company be involved in interstate commerce, or commerce that crosses state lines including if the company has an internet business presence.

Obtaining a federal or state trademark registration can be very beneficial to a company.  This includes providing priority over subsequent, or junior, users in the event the trademark registration holder expands to a new market.  If there is a company using the same trademark in that market but it is a junior user, the trademark owner may be able stop the junior user from using the mark.  Similarly, if a large company begins using the trademark after your use of the mark, it is much easier to prove that the trademark registrant’s use of the mark pre-dated the subsequent user’s use if the trademark registrant possesses either a state or federal trademark registration pre-dating the subsequent user’s first date of use.

At Shaver & Swanson, LLP we highly recommend trademark users obtain either a federal or a state trademark registration, or in some situations both, to protect their trademark rights.


What is a Federal Trademark Registration?

A Federal trademark registration (as opposed to a state trademark registration or common law trademark rights) provides constructive nation-wide notice that you are using a mark on the goods and/or services listed in your trademark registration.  In sum, the U.S. Congress expanded common law trademark policy through the enactment of the federal trademark registration system. The federal trademark registration system provides constructive notice to other participants in the marketplace and prospective participants in the marketplace that a registrant is using the federally registered trademark and the federal registration system establishes priority in the rights afforded to the registrant. Federal trademark registration benefits the registrant by providing nationwide notice that the registrant is using the mark, benefits participants in the marketplace by allowing the participants to “rely upon a search of the trademark registry and their own personal knowledge of whether the mark has been used so that what may be substantial expenditures of money promoting the mark will not be wasted,” and benefits the consumer by allowing the consumer to rely on a trademark of a good in making a purchase without having to worry about purchasing a good of different quality than expected. Natural Footwear, Ltd. v Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3rd Cir. 1985)

In sum, a Federal trademark registration provides your company with a legitimate priority date and, in the event other companies unknown to you have been using the mark, locks in the territory of those prior users. Without a federal trademark registration, it is a race between the parties to establish customer recognition, i.e. secondary meaning, of the unregistered mark in unoccupied territory.

Common law trademarks

How do I get a trademark?

While a Federal trademark registration or a state trademark registration is greatly preferred, in general, Trademark protection ensues under the common law of trademarks as soon you begin using the name, but only as far as the area in which you are using the mark, provided that the trademark is protectable and not a generic word for your goods or services.  The U.S. Supreme Court described this principle in stating that a mark is protectable as far as it is known, but this protection does not sch to markets where goods bearing the mark have not traveled.  For example, a small hair salon in the North End of Boise, Idaho may have rights in its name in the North End, or perhaps even as wide as the entire Treasure Valley depending on its marketing and client range.  However, this hair salon may not be able to protect its name as far away as Portland, Oregon, New  York, or California.

The United States Supreme Court described the principle of trademark law and set forth the boundaries of common law trademark rights in Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). In Hanover, the United States Supreme Court illustrated that the purpose of trademark law is to protect the good will of a trade or business by identifying “the origin or ownership of the article to which it is fixed.” Id. at 412. The rights afforded to an entity through its trademarks grow out of use of the trademark and through the good will that becomes associated with the trademark. Id. at 413. Trademarks are treated as merely a protection for the good will associated with the mark, and not the subject of property except for the limited extent the marks are used in connection with an existing business. Id. at 414. The United States Supreme Court in Hanover summarized the geographical limitation of a trademark when it stated “the mark, of itself, cannot travel to markets where there is no article to wear the badge and no trader to offer the article.” Id. at 416.

In order to obtain trademark rights under the common law for a descriptive trademark, your mark must have acquired secondary meaning.  This means that the consumers in an area associate that mark with your business or product, as opposed to associating the mark as a description of the goods or services you offer.

The Internet has greatly complicated the analysis of how far a common law trademark’s rights stretch.  Does an online company who has a few sales across the country have nation-wide rights?  Probably not, but determining just how far those rights stretch is a very complicated, expensive argument to make in court.

State or Federal trademark registration greatly helps in clarifying rights and puts others on notice that you are using your trademark and helps to avoid the expense and issue of proving a common law trademark.  Please do not hesitate to contact us to assist you in furthering the protection of your trademark.

Trademark Searching

How do I do a trademark search?

The first step of getting a trademark is to see if there are likely to be conflicts with other marks.  The conflict is evaluated on the basis will the mark create a likelihood of confusion with a prior mark, including the predominant questions of if the marks sounding and appearing the same, and if the goods and services the marks are used on will likely cause confusion with the senior mark holders.

There are several places to look for these potential conflicts: the federal database of trademarks, state trademark registration databases, common law marks used without being registered, corporate names, and trademarks registered in the 50 states.  A conflict in any of those categories can be a problem for registering or using a trademark.  It is advisable to search all of these sources for possible conflicts, but at least searching the federal database is essential to begin.

Foreign trademark protection

What if I want to have my mark registered in other countries?

  • If your products are to be sold in other countries, you may wish to register trademarks in those countries. A Foreign Trademark Registration is generally acquired on a country-by-country basis, and trademarks registered in foreign countries do not affect your registration of the mark in the United States.
  • If a trademark is already owned or an application has already been filed in the United States, the owner may file for foreign protection under the Madrid Protocol, rather than filing in each country separately. Filing under the Madrid Protocol can reduce costs considerably if more than one foreign registration is sought.
  • Shaver & Swanson, LLP has a network of international trademark attorneys that can handle your trademark protection needs anywhere in the world.

How long do trademark rights last?

How long do trademark rights last?

  • First, the continued validity of a trademark registration is dependent upon actual use of the trademark. In this sense, trademarks are not true property rights in that an express, or circumstantially proven, permanent intention to abandon the trademark is sufficient grounds to cancel a federal trademark registration.
  • Trademark rights can also be lost through dilution. Dilution commonly occurs where competitors adopt very similar trademarks and the trademark holder takes no action to defend the mark.
  • Another means of losing trademark rights occurs when the trademark becomes so identified with the particular, precise goods to the point where the mark loses its distinctiveness and instead becomes a generic descriptive term. An example most people are familiar with is aspirin, which was originally a trademark (owned by Bayer), but became so identified with acetylsalicylic acid tablets that it eventually turned into a generic term. Other companies are fighting to keep their trademarks from being found generic. These include Xerox ® for photocopiers.
  • An actively used trademark can continue to exist, increase in value to the company, and increase the sales and profits of the company for an unlimited period of time.

Trademarks Overview

There are several types of trademarks possible: common law, state, federal and foreign.  A federal trademark registration provides priority and protection on a nationwide scope and is excellent for companies that conduct business on the Internet serving consumers in multiple states. A state trademark registration provides state wide priority and protection and is best suited for companies that operate within a single state, such as local companies. Common law trademark rights provide inherent protection when a business is utilizing a trademark in a given area and has developed name recognition within that area.

In sum, a trademark protects the source identification of a good, while a servicemark protects the source identification of a service.

How do I obtain a federal trademark?

  • First, have a trademark search conducted by an attorney to determine if other similar marks exist. A trademark search should not only look for similar marks, but phonetic equivalents, logos, designs, cancelled trademarks, and should give you an analysis of any less similar trademarks which might pose a likelihood of confusion with your trademark. A general computerized search will not be this exhaustive, nor will you have any idea regarding whether a likelihood of confusion exists.  While there is no requirement by the Trademark Office that a trademark search be performed, we often recommend that the client have such a search done before thousands of dollars are spent in marketing and advertising…building up goodwill in a company or product’s name.
  • Second, have a trademark application filed for your trademark by an attorney. A properly filed trademark application will avoid common mistakes which will automatically result in a refusal to register your trademark application and/or (quite possibly) a loss of rights. Your trademark is too important to your business to lose–have it filed by a professional.
  • Third, “prosecution” of the trademark application takes place. This is the process where the trademark examining attorney asks for additional information, asks an applicant to make changes to the application, and issues formal “refusals” to register for grounds such as “likelihood of confusion,” and “merely descriptive.” Once the examining attorney is satisfied that the trademark is registerable, the trademark will be published in the Patent and Trademark Office Official Gazette for opposition. The Official Gazette is routinely reviewed by law firms and corporations to ensure that no marks are being registered which are confusingly similar to other marks of clients of the firm or company. If opposition is filed, it is the applicant’s burden to prove that there is no likelihood of confusion between the proposed mark and the pre-existing mark.
  • For “intent-to-use” trademark applications, after successfully negotiating the opposition phase, a notice of allowance will issue, and the applicant has six (6) months in which to certify actual use in interstate commerce and supply samples of its use.
  • Of course, this is a highly simplified discussion of how to obtain a trademark. Again, if the trademark is worth obtaining, it is worth doing the job right. Find an attorney that you trust to file and prosecute the application for you.