U.S. Trademark Question

[DaddyzHome]

A buddy of mine wants to start a site, it's his first one. I do mostly affiliate stuff, so I'm new to what he's asking. But, I told him I would ask around.

He has a pretty decent domain name, with a common phrase + a common word. The problem is, there is a trademark held with a similar name. He wants to know if he will have any issues.

This is hard without giving out his domain name, but here's a good example:

His domain is comparable to NSFWBoys.com
With this example, there is a trademark for NSFW Boyz (yes, with a "z")

It appears to be a musical group of some sort. Here are some of their trademark entries:
1. musical recordings
2. entertainment services in the nature of personal appearances featuring a musical group
3. printed matter, namely posters, sheet music, song books, tour books featuring a musical artist

There is also a disclaimer that says: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BOYS" APART FROM THE MARK AS SHOWN

So, would it be possible that he will be receiving a letter from their attorneys if he opens a site called NSFWBoys.com, featuring adult material?

Thanks for your help.

[DaddyzHome]

Nobody ?

[edgeprod]

You're not getting responses because this is a very nuanced question. It's not something you should take the advice of GFY members on -- you need to consult a lawyer.

Something more cut and dry, we can take an educated guess, but there are too many variables here. Sorry.

[candyflip]

Lots of sound logic here lately. Not quite balancing out the bullshit, but it's a start.

[woj]

reality is, no one likes to be in any way associated with porn, so it doesn't really matter whether they have a case or not, if the band has $$, they'll probably fuck with you anyway...

[pornlaw]

Maybe a TM issue and definitely a domain issue.

I just registered CocaKola.com - think I might have a problem ?

If he has tens of thousands to pay a lawyer to fight to keep his domain name - roll the dice. He's got a legit argument. Different classes of use.

Delta Airlines - Delta Faucets
Lucky Jeans - Lucky Cigarettes
Continental Airlines - Continental Sausage

[DBS.US]

Check out this site, great info. Barely Legal Radio

[TheSquealer]

Can you race your motorcycle without a helmet and protective gear? Of course you can. Is it a great idea? Obviously not. Is it safe or responsible or even mature behavior? If you're already retarded... possibly.

[Barry-xlovecam]

This is from a WIPO decision we won:

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.

Trademark is like Michael says; we were awarded and acronym trade mark, e.g.; ABC, that was the same as a Bank's trademark, they were a bank in Spain and we were an unrelated business in another country -- there was no possibility of confusion or dilution of the bank's trademarked brand.

Again like Michael said; ''(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and'' at very least any WIPO arbitration will be a pissing contest ...