Legal Question in Intellectual Property in New York

does domain name of a trademark = infringement? see details.

If my company is registered as cooking education and all of my logo's, ad copy and printed materials reference that name (and there is currently not a trademark for this name) but I use the domain cookinged. com and cooking-ed. com and there is a trademark for ''cooking ed'' (although the website is not currently in use) can I be sued for trademark infringement?

Asked on 6/24/09, 10:37 am

4 Answers from Attorneys

Kristen Browde Browde Law, P.C.

Re: does domain name of a trademark = infringement? see details.

It certainly is possible - but you haven't provided enough information to be certain.

The existence of a trademark, whether or not the web address is in use, is a red flag that should prompt a full examination of your use and of the registered mark. If there's overlap, you are in some jeopardy.

However, there are often solutions to this kind of problem. If you'd like to arrange a consultation, please feel free to get in touch.

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Answered on 6/24/09, 10:43 am
Ken Feldman Feldman Law Group

Re: does domain name of a trademark = infringement? see details.

It depends on many things including who used the mark first, how strong is the use, who has the resource to litigate, and of course whether the consumer is being confused or not.

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Answered on 6/24/09, 1:01 pm
Sarah Grosse Sarah Grosse, Esquire

Re: does domain name of a trademark = infringement? see details.

As the other attorneys have stated, it's possible you could get sued, but much more information is needed.

You can do some investigation on your own. You must have already found a trademark registration for "cooking ed". Is it a USPTO registration or state? Look carefully at the trademark record: owner, good/services, principle/supplemental register, pending or registered, live or dead, TTAB records of procedings against the mark, disclaimers, when was the last affidavit of use filed, attorney of record. The trademark record itself provides you with a WEALTH of information if you know what it all means and how to interpret it.

You should retain an experienced trademark attorney to take a look at this and give you their opinion on the matter. An ounce of prevention is worth more than a pound of cure.

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Answered on 6/24/09, 2:47 pm
Warren Markowitz Warren R. Markowitz, Esq

Re: does domain name of a trademark = infringement? see details.

In general there is a good possibility that there is trademark infringement. There are a multitude of facts that need to be looked at including the registration of the mark, the use of the mark (i.e. what realm of commerce), the likelihood of confusion on behalf of consumers, etc.

I would suggest that you take the time to contact an IP attorney to discuss your position and the specifics. If you wish to speak I can be reached via email or telephone.

Good Luck

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Answered on 6/24/09, 6:35 pm

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