Re: [ga] Topic: Fair Use Domain Name Registration

["Martin B. Schwimmer" <martys@interport.net>]

>You decide to register a domain name for a new product (for example, hair
spray) that you just though of, and you diligently check to see if there
are any trademarks which match the domain name you've selected.  You find
there is, but it is for an entirely different product/service (for example,
race car tires).
>
>If you register the domain name without having first filed a trademark,
have you done anything wrong/illegal?  Should there be a requirement to
file for a trademark (or an intent-to-use)  when there is already a
preexisiting mark?  
>
>Opinions?
>
>Randy

No, not illegal but not advised.  The domain name aspect to this hypo is
besides the point.

If you are going to promote a hair spray under a name, you would want to
obtain trademark protection to prevent third parties after you from using
that name (or something confusingly similar) for hair spray or related
goods.  The ITU application will be the first step in you accruing
protectable rights - the mere registration of the domain name will not
create protectable trademark rights.

As for the race car tires of the same name which existed prior to you (I am
trying to imagine a name that would work for both hair spray and tires -
BLOW OUT being good for one but not the other) your act of filing an ITU
will not affect the analysis of whether or not you are infringing the tire
maker's mark - the marks are confusingly similar or they are not.  However
your act of filing for trademark protection will provide some evidence that
you are not a pirate - it will help as it is evidence of your "bona fide
attempt to offer" goods or services (using the UDRP's language) and if the
Trademark Office approves your application without citing the tire
registration as a block, then your approved application will be (some)
evidence that the uses are not confusingly similar.


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