Can a website contain a trademarked phrase? Why? 6 Answers as of April 30, 2015

I have a question regarding whether a trademarked phrase can be used in the name of a website domain. For instance, can a website called still use that domain name if the phrase “Taco Baking” has already been trademarked? Does such a website violate intellectual laws? Does it violate laws even though it's similar because it includes the name? Is the website in infringement even if it was in existence before the copyright was approved?

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Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
The owner of the trademark may object to the use of their trademarked name and demand that you stop using their registered name. It depends upon the company if they want to stop your use and it also depend on the products or services you are offering. The trademark office will generally not register names for "Taco Baking" for a company that bakes tacos, but might register the mark for a suntan lotion or for a line of clothing. For similar marks the trademark office considers the marks "You Are Great" and "URGR8" as the same mark. Prior use will provide some protection and a basis for invalidation of the later registered mark.
Answer Applies to: California
Replied: 4/30/2015
Webb IP Law Group
Webb IP Law Group | Jason P Webb
It can as long as it is not being used as a source identifier in a way that is confusingly similar to the trademarked name.
Answer Applies to: Utah
Replied: 4/30/2015
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
The website is most likely infringing the trademark, if they're in the same line of business and they obtained the domain name after the trademark was in use.
Answer Applies to: California
Replied: 4/30/2015
Sebby Law Office
Sebby Law Office | Jayne Sebby
Yes, a web site can contain a registered trademark if either 1) the mark is owned or licensed to the owner of the web site or 2) the mark is used as part of a valid evaluation of or commentary about the goods or services and the owner of the web site acknowledges the ownership of the mark. The issue of whether a domain name that is identical to a registered trademark can be used by someone who doesn't have a right to the trademark is still up on the air legally. This is becoming a major problem and resolving it can be very expensive. Assuming that "TacoBakingRoom" is selling the same sort of goods or services that "Taco Baking" is, you can file a complaint with ICANN and/or whoever sold the domain name asking that the domain name be revoked. File one with the ISP who is hosting the site too. Send a cease and desist letter to the "TacoBakingRoom" as well. However, if the companies aren't in the same or similar businesses, each may be able to use its respective mark on-line.
Answer Applies to: Nebraska
Replied: 4/30/2015
Banner & Witcoff, Ltd. | Ernie Linek
To be safe - no. Trademark infringement (use without permission of the owner) is only actionable if it causes a likelihood of confusion to the public. The types of confusion are many - including a wrong impression that the trademark owner is affiliated with you or is sponsoring you and your website. Best suggestion to avoid federal court litigation - DO NOT USE A TRADEMARK THAT YOU DO NOT OWN.
Answer Applies to: Massachusetts
Replied: 4/30/2015
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    You are very confused between trademarks and copyrights. A domain address for a website cannot include a trademark owned by others if it would cause consumer confusion. The issue is whether use of the mark as a domain causes consumer confusion. If so, use of the mark in the web sites domain name would constitute illegal infringement.
    Answer Applies to: New York
    Replied: 4/30/2015
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