A few tips for trademark clients:

  • Having a website is not automatically “use” of a trademark in connection with selling goods or providing services.
  • Registering a domain name does not give rise to use of a trademark sufficient to establish ownership or enforceability.
  • More than token use of a trademark is required to establish ownership and registrability; the mark must be used in connection with promoting and selling identifiable goods or services.
  • Even a federally registered trademark owner is not automatically entitled to enjoin a remote junior user in a market where the trademark owner does not have a branding presence.
  • Increasingly, however, the lack of geographic proximity is not dispositive, but is merely one of several factors to be considered in gauging whether confusion is likely.
  • Unpermitted use of the trademark of another “as a commodity” in connection with a sale of merchandise is likely to be infringement even if the products are clearly branded as emanating from the defendant.
  • Purchasing advertising triggered by computer users’ entry of competitors’ marks as key words is not per se infringement and is not likely to create liability on the part of the search provider.
  • However, the advertiser may still incur liability unless the resulting ad is clear and not confusing.
  • For more information regarding trademarks, see our Selecting a Trademark brochure which we provide to our clients.