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[smoh]

Hi all,

I'm completely new here and have done some research, but have not been able to find any conclusive information.  I work for a cell phone company which provides various products and services.  The question that I have is in regards to using cell phone manufacturer trademark names as well as wireless network carrier names on my website.

We have various services that use all manufacturer names such as BlackBerry, Motorola, HTC, Samsung, LG, Nokia etc. as well as various carrier names such as AT&T, T-mobile, Verizon, Rogers, Telus, Bell etc.  These names are used only to describe the product that we are selling.  For example, if we are selling an unlocked smart phone, the product title would be "Unlocked BlackBerry Bold 9700". Would this be infringement of the Trademark BlackBerry?  Further, the URLs have the trademark name in it as well.  For example - mydomain.com/unlocked-blackberry.html.  I have read that having the trademark name in the domain name (for example - unlockedblackberry.com) would be trademark infringement, but would we be infringing on the trademark by adding it as an extension name (the first example provided).

Also, can someone please confirm that using a trademark name in a domain in addition to other words would be trademark infringement.  For example, (blackberryaccessories.com).

Any guidance would be great in helping us understand the steps we need to take.  We are a Canadian company but make sales all over the world.  Thank you in advance lawyers!

[JSonnabend]

Search the forum for "nominative use".  You will find relevant discussion on the topic.  Feel free to post any follow up comments questions here.

- Jeff

[OMG IP]

Search the forum for "nominative use".  You will find relevant discussion on the topic.  Feel free to post any follow up comments questions here.

- Jeff

I searched, but got no hits.  Would you mind posting a link (at your convenience)?  Thanks.

JMD

[Kaitlin]

Same here, Jeff.  Maybe the discussions got wiped due to the recent spam problem? 

@Smoh.  I'm mainly pre-internet in my TM experience and won't speak to domain name use, but with regard to use within the site, generally speaking it's OK to refer to a trademark by name when you're talking about the brand in question.  To keep the owners happy, it's good to ensure your use treats the trademark name as a mark with capitalization and, if registered, the circle-R symbol following the mark.  The main thing is you don't want anyone thinking you're sponsored by or connected with the respective trademark owners; disclaimers are good for this. 
(In the above, I'm not speaking about hidden references that may bring up the site in a search engine, however.  For that you need input from someone up on the recent law on internet tm use.)


Incidentally, a general internet search of "nominative trademark use" does bring up a number of hits, including a piece from Foley and Lardner about a 9th circuit decision applying the concept of "nominative use" to domain names.  (Note that 9th circuit decisions bind Californians and others within that circuit's area, but may only serve as a bell weather for other locations.)