Legal Question in Intellectual Property in New York

Will a - (dash) or extra words avoid trademark infringement?

So for example, if there there is a trademark for apple tree, can I use apple-tree dot com? or appletreeexperts dot com?

Thank you.


Asked on 6/09/09, 11:13 pm

4 Answers from Attorneys

Nancy Delain Delain Law Office, PLLC

Re: Will a - (dash) or extra words avoid trademark infringement?

To avoid trademark infringement, you must avoid being found confusingly similar to the senior mark in the class(es) in which the senior mark is used/registered.

Thus, a trademark for APPLE TREE clothing, for example, may be confusingly similar to APPLE clothing, but APPLE TREE clothing is not likely to be found to be confusingly similar to APPLEŽ Computers or APPLEŽ Records. APPLE TREE Computer would go down in flames in a trademark battle between it and APPLE Computer, though.

A URL can indeed infringe a mark.

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

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Answered on 6/09/09, 11:38 pm


Kristen Browde Browde Law, P.C.

Re: Will a - (dash) or extra words avoid trademark infringement?

To supplement the previous answer: the question is whether your use will tend to confuse the public as to the origin of goods and/or services. So, if you're using Apple Tree as a brand for insurance, and someone else uses apple-tree.com to sell candy, it may not be infringing. But the analysis of trademarks and potential infringement is quite complex, and one that should not be attempted without competent and experienced legal counsel.

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Answered on 6/10/09, 12:10 am
Gerry Elman Elman Technology Law, P.C.

Re: Will a - (dash) or extra words avoid trademark infringement?

Generally, NO, if you mean that the domain would be used to promote goods or services competing with those of the owner of the trademark "apple tree".

You should note that trademarks come in various flavors, and they vary from country to country. In the U.S., they can be federaly registered trademarks (and those may be on the Principal Register or the Supplemental Register), or they can be a trademark registered with one of the 50 states, or they can be unregistered but still protected under "common law."

A trademark for particular goods, say, personal computers, that's owned by a first company is infringed if a second (unrelated) company applies to its products a term that would be likely to lead some consumers of the products to be confused as to the sponsorship or source of the second company's products. Suppose the second company also sells personal computers. The addition of a hyphen or an additional word to the trademark term generally wouldn't make it different enough from the first trademark to avoid infringement.

However, suppose the second company sells bottled beverages. In that instance, use of a trademark that's identical to the first company's trademark would generally be unlikely to cause confusion. If the second trademark were even slightly different from the first company's mark, the probability of consumer confusion would be even lower, and thus would be less likely be found to infringe the rights of the first company.

How these principles apply in the real world vary from one actual situation to another. For legal advice in such a circumstance, you should consult an attorney with expertise in intellectual property law.

P.S. Did you know that Facebook recently announced they're going to start assigning user names to individual profiles. It will be on a first come, first served basis starting Saturday, June 13th at midnight (Pacific Time I surmise). But those who don't want their registered trademark to be snapped up by a random user of Facebook can send a communication claiming their trademark at http://bit.ly/19FiVI

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Answered on 6/10/09, 12:13 am
Sarah Grosse Sarah Grosse, Esquire

Re: Will a - (dash) or extra words avoid trademark infringement?

If the issue is limited to exactly what you have stated above, the plain and simple answer is NO, adding a dash or extra (descriptive) words will not avoid trademark infringement. As my colleagues have stated, there are other factors to consider, such as whether the marks are used in connection with similar goods/services.

The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center hears domain name disputes. WIPO has specifically held that a domain name which incorporates a registered trademark and adds a dash or descriptive words to it is confusingly similar under the Uniform Domain Name Dispute Resolution Policy (UDRP). I argued and won such a case--my client's trademark was CREATIVE NAIL DESIGN, and the infringing domain names were creative-nail.com, and creativenails.com. The remedy in WIPO court is limited to transfer of the infringing domain names(s), and it is quite often accompanied by a civil suit in a 'regular' court for damages.

To sum it up, you don't need to copy a trademark EXACTLY in order to infringe it, and adding insignificant or descriptive matter to it will not avoid infringement.

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Answered on 6/10/09, 7:15 am

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