BizTech Law Blog

Trademark infringement is a reoccurring problem for many businesses.  Recently, Apple, Inc. was denied an injunction prohibiting Amazon.com from using its mark: "App Store." Amazon.com utilized the name "Amazon Appstore for Android."  Despite similarities between the parties' marks and services, the court found that a likelihood of confusion did not exist and Amazon.com did not infringe on Apple's mark.

With that in mind, let's take a look at the basic elements regarding trademark infringement.

Let's take a look at a common scenario.  An employee named Ted leaves a company, let's say "Company A," and goes to work for another company in the same industry – "Company B."  While employed by Company A, Ted worked on key projects and had access to and developed many new and creative concepts.  When Ted joins Company B, he implements many of the new and creative concepts he helped develop while working for Company A.  Company B later commercializes some of these concepts developed and brought over by Ted.  Company A then sues Company B, claiming misappropriation of trade secrets.  A trade secret, of course, is any information that has economic value because it is not generally known to the public and is subject to efforts to keep the information secret.  This scenario is common - the characters in the real life saga of Mattel v MGA Entertainment are not.

Recently, I received a phone call from a client asking for advice on a reoccurring issue.  The client asked: “Do I have legal recourse against a competing website that is utilizing my trademark in its domain name?” 

The short answer is yes, but let's look at the reasons why.

Simply put, a domain name is a Web site's unique address on the Internet.  It can be used to identify organizations and other entities on the Web (e.g., http://www.nike.com).  Like any other advertising message, signage, or other communication, a domain name can infringe upon a trademark.  However, a claim of trademark infringement involves more than simply proving that your trademark is being used in another’s domain name.