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Hypothetical, to protect the innocent :)

Let's say Google has a product called "Stock Manager". Technically, they call it "Goole Stock Manager". After a trademark search turns up 0 results for "Stock Manager", we assume the reason this trademark does not exist is because it was denied for being too literal.

Now, we come across an opportunity to acquire the domain name "StockManager.com". Let's assume it's a significant investment and that we're not willing to compensate with another name - this is the perfect name. The product we will sell at our new company, StockManager.com, will compete directly with "Google Stock Manager". Just because Google decided to name a product Stock Manager surely doesn't mean that the domain name StockManager.com is now useless, right?

All fear for Big Brother and his 100's of lawyers aside, what is the reasonable thinking here? Would you proceed with the acquisition of "StockManager.com"?

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2 Answers

I think this is all fine except this part:

We assume the reason this trademark does not exist is because it was denied for being too literal.

This is wrong because:

  1. Assumptions are bad. You have no evidence.
  2. "Too literal" is not a reason for a trademark being denied. Common use isn't either. It depends on context, scope, whether you want to include styling, etc..

As an example of why you can do this and get away with it, Kodak invented the word "PictureCD" in the late 90s and even ran TV ads about it, however picturecd.com is owned by a little company in Austin TX (which I worked for at the time).

Ultimately though, if you tread so close to danger, surely you want trademark protection yourself; a patent/trademark attorney would be able to give better guidance.

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thanks for the feedback Jason - interesting stuff. I think going to a trademark attorney first it a good move. – toddo Jun 6 '10 at 19:57

+1 Jason.

In concrete terms, I would suggest you go talk to trademark specialist as soon as possible about:

  • acquiring "stockmanager.com"
  • how to name your upcoming company ("Toddo Stock Manager Inc" / "StockManager Inc" / "StockManager.com Inc")
  • and that you get started right away, i.e. register company and send in the trademark protection application as soon as possible.

As soon as this is in motion, you'll want to actually buy the domain. The timing here is important, you don't want to wait too long and risk the domain being sold to another party, or the current holder finding out how much you need the domain.

Once you have trademark protection and own the domain, then I don't see how the hypothetical Google or other large company can really take it away from you. Of course everything is possible, but it would be very expensive, and could turn into a public relations nightmare for the large company. If they find that it's vital for them to take away your trademark protected company name, then they would most likely pay you off, i.e. negotiate a settlement.

Since this is vital to the future of your business, you need to think about trademark protection in the US, EU, and possibly elsewhere too.

Please note that all of this requires you to act in good faith. We don't know what domain name you're actually talking about -- but it must be a generic business that is 'large' enough to accommodate multiple competitors, and where you are creating a real stand-alone business and not trying to 'leech' from another company. If you're not acting in good faith, then your trademark can be deemed invalid ex post facto.

Have a look at trademark and domain discussions here too.

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thanks Jesper - great advice. the common thread here seems to be hiring a trademark attorney to dig a bit deeper into this for me before making the acquisition. – toddo Jun 6 '10 at 20:08

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