QUESTION

Can a website contain a trademarked phrase? Why?

Asked on Apr 29th, 2015 on Patents - Massachusetts
More details to this question:
I have a question regarding whether a trademarked phrase can be used in the name of a website domain. For instance, can a website called TacoBakingRoom.com still use that domain name if the phrase โ€œTaco Bakingโ€ has already been trademarked? Does such a website violate intellectual laws? Does it violate laws even though it's similar because it includes the name? Is the website in infringement even if it was in existence before the copyright was approved?
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3 ANSWERS

Intellectual Property Attorney serving South Jordan, UT at Pearson Butler
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It can as long as it is not being used as a source identifier in a way that is confusingly similar to the trademarked name.
Answered on Apr 30th, 2015 at 10:39 AM

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Acquisitions Attorney serving Lincoln, NE at Jayne L. Sebby
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Yes, a web site can contain a registered trademark if either 1) the mark is owned or licensed to the owner of the web site or 2) the mark is used as part of a valid evaluation of or commentary about the goods or services and the owner of the web site acknowledges the ownership of the mark. The issue of whether a domain name that is identical to a registered trademark can be used by someone who doesn't have a right to the trademark is still up on the air legally. This is becoming a major problem and resolving it can be very expensive. Assuming that "TacoBakingRoom" is selling the same sort of goods or services that "Taco Baking" is, you can file a complaint with ICANN and/or whoever sold the domain name asking that the domain name be revoked. File one with the ISP who is hosting the site too. Send a cease and desist letter to the "TacoBakingRoom" as well. However, if the companies aren't in the same or similar businesses, each may be able to use its respective mark on-line.
Answered on Apr 30th, 2015 at 8:31 AM

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Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
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To be safe - no. Trademark infringement (use without permission of the owner) is only actionable if it causes a likelihood of confusion to the public. The types of confusion are many - including a wrong impression that the trademark owner is affiliated with you or is sponsoring you and your website. Best suggestion to avoid federal court litigation - DO NOT USE A TRADEMARK THAT YOU DO NOT OWN.
Answered on Apr 30th, 2015 at 7:42 AM

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