Legal Question in Intellectual Property in New York

is legal or is it not legal to use

Asked on 2/10/12, 8:48 am

1 Answer from Attorneys

You're not going to get a direct answer on that from anyone but a judge; however, here's how you can gain confidence that it is okay:

1) If you try to register the domain and it is available then you know no one is currently using the url.

2) Next, try all of the other extensions - .org, .uk, .tv, .co, etc

3) Next, you should check federally registered trademarks using the TESS system ( Search the word "hulkshare", "hulk" by itself, "", and any other iteration you can think of that is close - including "bulkshare".

4) If your trademark search pulls up any registered marks click on them to read the details. Are they in the same business as you? Are they operating in the same geographic location as you? Basically, if someone was trying to buy from a company named "", had a typo, and typed "" would they notice they're shopping in the wrong place when your website pops up? If the answers to all of these are "No" then you can skip to step 6.

5) If there are any trademarks that are close, you can contact the trademark holder directly by phone or letter, tell them what your business is going to do, and that you want them to sign a release that they will not sue you. (I highly advise an attorney guide you through this. You do not want to run the risk of "collusion" that would violate the Sherman Antitrust Act.)

6) Repeat the Trademark search in the Secretary of State's office or the Chamber of Commerce for every state you're going to try to do business. Go back to step 5 if you find any that seem close to your business.

7) Complete a quasi-Trademark search using Google, Bing, Yahoo!, and any other search engine you can find to determine if anyone is using your business name. Anything close? Go to step 5.

8) Finally, you can apply for a trademark through the USPTO and become the registered user that other people will need to contact if they ever want to use a name similar to yours.

All-in-all, the first time you do one of these searches you could spend 4 to 8 hours. Trademark attorneys can go quicker and typically for reasonable fees, but you should not only have "" in mind but a few alternatives that they can search just in case the first one has problems. Most attorneys will supply you with a legal brief of their opinion of the strength of your marks in light of the most recent case law and recommendations for how you can improve your position without jeopardizing your business strategy. If you later are challenged or threatened by someone, the legal brief should save you money preparing/answering those threats.

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Answered on 2/10/12, 9:31 am

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