Trademark Infringement - where is the line drawn?

Question

I have a business name: iBead Elegants (in Arizona) which specializes in handmade jewelry - I do not sell beads wholesale, etc. I also do not have a domain name of such. I sell 99% of my business through eBay.
I received a message from a company in Florida called iBead.com which has a federal trademark as iBead.com
This company iBead.com has a business in Florida with a sign on the outside of the building "Bead Warehouse" and under it is "iBead.com" ....

Although I have a City, State and Federal ID under my name, am I infringing on his trademark illegally?
Also I didn't know that internet domain names were trademarked.

Answer 1

While I ain't a lawyer, I study these disputes as part of my previous work in the domain name registration business.

If the other party in question indeed has a federal trademark as they indicated, then you are indeed potentially infringing it. A federal trademark gives nationwide constructive notice that essentially says, "Hey US bozos, I've got a trademark for this to do that whether you know it or not. If I catch you infringing it, I'm going to treat you as if you knew."

US-based parties file a federal registration at the United States Patents and Trademarks Office (www.uspto.gov). I just checked there and saw a live trademark registration for ibead.com, so that answers your question as to whether domain names can be trademarked or not.

There are 2 possible problems:

1. iBead is potentially an example of a "fanciful" trademark because the word is made-up. Examples are kodak, xerox, and (believe or not) even microsoft, and such words are made-up for the sole purpose of branding (or establishing a trademark right in this case).

2. If your business name's registration date doesn't precede that of the trademark in question, then you might be in trouble. It's going to be tough to show you never intended to infringe on such, even if it's "coincidental".

In any case, you'd best seek legal advice from a licensed qualified professional to review all available facts and assess your risks.

Answer 2

The allegations of Internet trademark infringement that have generated the largest amount of publicity involve domain names. Domain names can be considered the addresses of the Internet; e-mail is sent and web pages are found through the use of domain names. As an example, the web address for the BitLaw web site is www.bitlaw.com, while e-mail to Dan Tysver (BitLaw's author) is sent to [e-mail] (both using the "bitlaw.com" domain name). Domain names are more than just addresses, however, since they can be selected by the "addressee" and are usually closely associated with a particular service or product.

Because of the increasing popularity of the Internet, companies have realized that having a domain name that is the same as the company or product name can be an important part of establishing an Internet presence. To obtain a domain name, an application must be filed with an appropriate registrar. However, when companies attempt to obtain their desired domain name, they may discover that their desired domain name is already taken. When this happens, the company can either choose a different name or fight to get the domain name it really wanted. These fights are called domain name disputes:
http://www.bitlaw.com/internet/domain.html

Answer 3

Determining if marks infringe can be tricky and each situation varies from another.

The general rules to keep in mind are:

1) Are the names similar in Sound, Appearance or Meaning?

2) Are the industries the same or similar to one another?

3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?

4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?

Here's what the USPTO has to say about this matter:

"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."

It's best to contact a trademark attorney to assist you in determining if this will be a problem or not.

Hope that helps! I wish you much success & happiness in all your ventures!