Billings, MT asked in Copyright, Business Law, Trademark and Intellectual Property for Montana

Q: I want to name my app "" however it's being used as a domain by "". Am I still able to use this name?

It is not a registered business or trademark. They only have the domain name.

2 Lawyer Answers
Sean Goodwin
Sean Goodwin
  • Intellectual Property Lawyer
  • Evanston, IL

A: This is potentially a problem.

Trademark infringement is based on a likelihood of confusion. If you are providing a good or service that is similar to someone else and using the same name, then there could be confusion as to the source of the goods/services.

Federal trademark registration is a first-to-file system. However, anyone who previously used a similar trademark for similar goods/services is grandfathered in under something called "common law." Trademark law says that the junior user with the federal trademark registration can use the mark in all 50 states, and the senior user is stuck in its current geographical area of use. This is an issue for the current digital age where we cannot draw a geographical area around the pizza restaurant's delivery radius.

Back to your question, ICANN website domain listings do not check with a trademark office to see if it is currently claimed. Your best option is to ask a trademark attorney for a trademark clearance search to see if it is possible to register the trademark even though someone else owns the website domain. From a marketing perspective, it would be best to own the domain and the registered trademark.

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›

A: If "" is not a registered business name or trademark, and you're planning to use it for an app, you might be able to do so. However, just because the name isn't registered doesn't mean it's free from potential legal complications. The fact that another entity, "," owns the domain could lead to confusion, especially if they operate in a similar industry.

Before deciding on this name, consider the potential for brand confusion and the possibility of a dispute. If has established a significant online presence or brand identity with their domain, they might argue that your app's name infringes on their branding, leading to legal challenges.

It would be wise to consult with a legal professional experienced in intellectual property law to assess the risks. They can provide guidance on whether using "" is advisable and how to proceed safely. Additionally, they can help you understand the nuances of trademark law and how it applies to app names and domain names.

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.