Niche Site Duel Part 3 – How to Cover Your Ass with an IP Scrub

Got your attention? No, an IP Scrub is not some fragranted body wash product you can pick up at the Body Shop. It stands for Intellectual Property and focuses on the area of law that deals with patent and trademark issues. It’s a rather bland topic but a necessary one to discuss. Thought I would lighten the mood and make it more fun with a provocative title. Plus, if I entitled this section “Niche Site Duel Part 3 – How to do a Trademark Search” you probably would have skipped it entirely. Now that you are here though, stick around and find out some basic ways to protect yourself from an ugly lawsuit.

Intellectual Property Scrub

Alright, so if you’ve been following along you know that I have chosen a keyword phrase I am interested in ranking high for. My plan at this point is to purchase a domain name that incorporates that phrase so that I can lay down a strong SEO foundation in which to build my niche site.

Here’s the thing. Before I go ahead and invest too much time and effort building out a website around a carefully chosen keyword phrase it’s best to make sure I am not stepping on anyone’s toes. Hence an IP Scrub (Intellectual Property Scrub) is an essential step in the keyword research and selection process. For me it is a best practice to follow if you want to avoid trouble. I am not a lawyer but I have learned that Intellectual Property violations can result in personal litigation actions against you. A corporation offers no protection to its Presidents or Officers when a trademark is violated. Translation: you can be sued directly. Don’t pass Go. Don’t collect two hundred dollars. Capiche!

Again, I am not a lawyer (Did I say that already?), nor do I play one on TV so if you want more details regarding intellectual property law I encourage you to contact an attorney or visit the United States Patent and Trademark Office for more specific and accurate information.

Trademark Check

Prior to purchasing a domain name I always verify that nobody owns a trademark to the terms I am using. You can pay a lawyer to do this for you, or you could do it yourself by visiting the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS). It’s a self-service system that allows you to see if a term is trademarked.

Keep in mind that just because a word or phrase is trademarked does not mean that it is entirely off limits. Your ability to use a trademarked term will depend on the good or service the protected word was applied to. Again, a lawyer can advise you better so if there is any question or doubt in your mind don’t take chances, get a lawyer. In fact I encourage it!

Remember: an ounce of prevention is better than a pound of cure.

For the purposes of this step, I am going to show you how I use TESS to check for the existence of registered trademarks. Let’s start with one I am certain is protected… “Vitamix”.


Step 1)

Heading over to TESS I select Basic Word Mark Search (New User).


Step 2)

Next I type the term I am interested in researching (Vitamix) in the Search Term text entry box and then click Submit Query.


Step 3)

If a trademark exists, it is returned. In this case 5 trademarks are returned. Three are LIVE and two are DEAD. It might seem as though we need not concern ourselves with the DEAD marks but that’s not true as DEAD marks may still be in use and the owner may be relying on common law rights.


Step 4)

Clicking the link in Step 3 labeled 77830032 allows us to dig a little deeper. From here we can see that the trademark application was submitted by Vitamix. You can also see when the application was filed, what “Goods or Services” it covers, etc. For me, that is all the information I need to abandon using Vitamix as the basis of my domain name.

Another thing to look out for is the use of the ™ and ® symbols. If a word, phrase, or graphic uses either of these symbols it signifies that they are trademarked terms. The ™ symbol can be used by anyone wishing to protect a mark. It’s a “poor man’s trademark” and serves to put others on notice that this word, phrase or logo is a trademark and is not to be used by others in a similar manner.

Only when a trademark application is filed and registration awarded by the USPTO can a person or company use the ® mark to emphasize its registered status. I make this point because if you see the ® symbol you can save yourself a lot of sleuthing since you know that it is a registered and protected mark. Note however, the absence of either symbol does not imply it is NOT registered. Confusing? Good. That’s why I don’t mess with trademarks. It gets way more confusing than that.


Checking My Niche Phrases

So now that we went through the above process with my dummy phrase “Vitamix” which I was certain was registered, I need to run the same test on the phrase I selected for my niche site: “juicer machine”.

I am going to test the following terms:

  • Juicer Machine
  • Juicer

Typing the keyword phrase Juicer Machine into TESS returns the following message:

No TESS records were found to match the criteria of your query.

Looks good so far.


Typing “Juicer” into TESS returned 82 results (Here is a partial snapshot):

I’m really only concerned with the word “Juicer” used alone. What I am looking for is any trademark on the word “juicer” that is registered for the same “good or service” I plan to use it in (i.e. Blenders, Juice machines, etc.).

I find two live trademarks and one dead one for the term “Juicer”.

Of the two live ones, the goods and services that the mark refers to in one case is:

  • compact discs, digital versatile discs, and digital multimedia file downloads

In the other case the term “Juicer” protects the following good and service:

  • Adult Sexual Aids, namely, dildos massage devices.

Sorry for the above shocker. The crossed-out word is how it is actually described in the TESS database.

The remaining dead mark seems to be a duplicate replaced by the aforementioned sex toy trademark.

So to recap, the goal of this exercise is to make sure that you are not using a protected word or phrase in an intentionally misleading way. If a word is trademarked and you intend to use it to describe a different “good or service” then for which it is registered you should be OK. It’s only when you try to use it to describe a product or service, that competes in the same good or service category for which the term is registered that you encroach on the intellectual property rights of the owner.

With that said, I think I am good to go here with juicer machine. Nothing appears to be registered with the United States Patent and Trademark Office that would mislead or confuse a consumer. If I felt there was an issue I would back off and start my keyword research anew.

I can’t emphasize enough that, I am not a lawyer. The process described above is my own anal retentive way of feeling warm and fuzzy about the keyword or phrase I select. The most important takeaway from this is that you should include a Trademark search as part of your keyword selection process. Educate yourself, and implement a system that will help you avoid infringing on the trademarks of others (and a horrendously large lawsuit).

I STRONGLY encourage you to contact an attorney or visit the United States Patent and Trademark Office for more specific and accurate information.

7 Comments

  1. Elena
    Posted October 17, 2010 at 1:29 pm | Permalink

    Great overview of doing an IP scrub!

  2. Posted February 7, 2011 at 1:24 am | Permalink

    Hi Mark,
    I just knew that there is a legal issue about the domain I’ve purchased… I like to know more about it, is there any site that you can recommend for this IP scrub.

    • Posted February 7, 2011 at 4:09 pm | Permalink

      Yosi,

      The best thing you can do is talk to a Lawyer that specializes in Intellectual Property law if you are having problems with a website or domain. They can advise you best.

      -Mark

  3. Kev
    Posted May 4, 2011 at 7:55 am | Permalink

    Thanks for Info,

    I do understand you are not a Lawyer but you abviously have knowledge in this area. Based on your example above, would you be able to use “Vitamix Juicer” (not using Vitamix alone) if you were planning on selling Vitamix products (through what ever means) Hope this is clear, look forward to you responce.

    Thanks

    Kev

    • Posted May 4, 2011 at 10:21 am | Permalink

      Hey Kev,

      I would not purchase a domain name with that phrase, however it may be OK to use that term as a page name in your webpage. I can’t say for sure and I would encourage you to ask a lawyer before doing so.

      To clarify:

      I would not do this:
      http://www.vitamixjuicer.com

      I think it is OK to do this if the page lists and sells Vitamix juicer products (But check with a lawyer first)
      http://www.yourdomainname.com/vitamixjuicer

      I think the latter is acceptable as there are countless sites, including Amazon that use this form to obtain SEO rankings.

      Example:
      http://www.amazon.com/Vitamix-Professional-Countertop-Blender-Platinum/dp/B000RRKQKA

      In fact, Amazon does this deliberately to achieve SEO juice as can be demonstrated by taking the above link and removing the “Vitamix-Professional-Countertop-Blender-Platinum” portion of the URL. Notice that it goes to the same place making that phrase superfluous.

      http://www.amazon.com/dp/B000RRKQKA

      Again, DON”T TAKE MY WORD FOR IT. Definitely check with a laywer first! Capiche!

      • Kev
        Posted May 4, 2011 at 6:08 pm | Permalink

        Thanks Mark, it has certainly made me think!!

        • Posted May 4, 2011 at 7:44 pm | Permalink

          No problem. Glad I could help get you thinking. :)

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