Author: Christopher Hamel-Smith
We have examined how to select strong trademarks and domain names ("ourname.com") to support our e-commerce strategy in the global marketplace of the Internet. Having identified prospective trademarks and domain names for this purpose, we must next conduct a thorough search to unearth any use of the same or similar trademarks or domain names. Fortunately, there are a number of powerful, yet free, resources on the Internet that we can use to help us avoid the very expensive problems that can arise if we adopt trademarks or domain names that give rise to a conflict with those used by others.
It is critical that we clear our prospective trademarks or domain names before we begin to use them on the Internet. This is because it is likely to become far more expensive to resolve any possible conflicts once we have begun using such trademarks or domain names to brand our company, and its products and services, in our e-customers' minds.
In fact, if a possible conflict is discovered at this first stage, there are a number of relatively inexpensive options available. For example, we can select another suitable trademark or domain name that does not raise these problems for our business. Or, we may be able to negotiate a resolution - and draw up an agreement - that clearly specifies the limits of each party's rights to the use of the trademark or domain name, both on the Internet and elsewhere.
However, if our use of a trademark or domain name is challenged after we have invested heavily in using them to support our e-commerce strategy, the costs and risks posed to our companies are likely to be significant. We may be dragged into complicated and expensive litigation in multiple countries and under various systems of law. And we may even be forced, by injunction or otherwise, to stop using our trademarks or domain names. This means that our customers may suddenly be unable to locate our company on the Internet, and we will have to incur high costs to communicate our new domain name and trademarks to customers. Additionally, we may find ourselves liable for damages and for the other parties' legal costs.
Prior to the Internet, a prudent prospective user of a trademark for traditional commerce would first scan his target markets for the use of similar trademarks on competing products. This might involve looking at trade magazines and catalogues, as well as visiting relevant sales outlets. Similarly, we can use several of the powerful search engines available on the Web to conduct a preliminary investigation into whether or not our prospective trademarks are already being used on the Internet. Because none of these engines is 100% effective, we should carry out this search using several, such Yahoo, Alta Vista, Excite and Infoseek. This is hardly a problem since these searches are completely free.
Additionally, you may want to visit a number of the commercial Web sites where products or services similar to those that you intend to offer over the Internet are already marketed. Many of these will allow you to conduct a search of the products and services offered at that specific site. You can therefore use this option as a further free check for potential conflicts.
You should also make use of the facilities at the Web site maintained by the United States Patent and Trademark Office at www.uspto.gov. These allow you to conduct a search for trademarks that have been federally registered in the United States, as well as for trademarks that are pending registration. Once again, you can conduct this search at no cost.
You can also find out whether your proposed domain name is available at no cost. You can try entering your proposed domain name in the Web address box of your Browser. Or, better yet, you can use the free search facilities at the Web site of one of the domain name registrars. Links to these can be found at The Internet Corporation for Assigned Names and Numbers' Web site at www.icann.org.
If you have made use of these powerful and free resources on the Web, your next step should be to consider whether to commission a professional search. In my next article we shall therefore look at how you can weigh the costs and benefits of such a professional search, before we turn to how you can register your trademarks and domain names for use in e-commerce on the Internet.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
