BrandBucket, a website where you can buy domain names, describes itself as a “brand name marketplace.” Their success depends on convincing entrepreneurs that buying a domain name for your new business is the same thing as securing a brand name.
Unfortunately, this is not true. Buying your desired dot-com domain does not actually give you any rights to that brand name, nor does it protect you from getting sued.
If somebody else already owns a trademark registration for a similar brand name in a related industry, they may have an excellent legal case against you. They can even get you kicked off of social media platforms, Amazon, or app stores without having to hire an attorney.
The name doesn’t have to be an exact match either. If somebody owns a different spelling of your brand name that sounds the same when said out loud, they effectively already own the rights to your name for their industry.
In other words, if you try to open a branding agency or legal services company called Kuhmooner.com, you’ll get a nasty cease-and-desist letter from us because of our trademark registration for Communer.
You could also be in serious trouble if your name only partially matches somebody else’s trademark. Want to buy EtnaHealth.com? Well, that domain will likely be a dud if somebody is already using a name like ETNA INSURANCE, AETNA CARE, or maybe even EDNA MEDICINE, in the health field.
Buyers Are Left Holding the Bucket
Brandbucket’s deceptive marketing practices result in many of BrandBucket’s customers spending thousands of dollars only to own domain names that they can’t legally use for their intended industry.
On their website, BrandBucket pays lip service to the idea that trademark rights exist and you should do some kind of basic trademark search before you buy a domain name. But they certainly don’t guarantee that any of their domain names can legally be used by buyers, let alone owned as trademarks.
On their listing pages, BrandBucket helpfully suggests what industries you should use their domain names for. These suggestions are often recipes for lawsuits.
In many cases, they offer industry-specific brand names that can really only be used in one industry. If a confusingly similar name is already registered as a trademark for that one use, then the domain name is effectively unusable.
All “Brand Name Marketplaces” Do This, Not Just BrandBucket
I don’t mean to single them out; the whole “brand name marketplace” business model requires this sort of dishonesty. Competitors like SquadHelp do the same thing. I get that calling your domain names “brand names” is a good marketing tactic, but it necessarily involves tricking people into wasting thousands of dollars on legal landmines.
Please note that while I am an experienced trademark attorney, Communer is not a law firm and we are not giving you legal advice on these domain names. This blog post is no substitute for hiring your own attorney to evaluate a domain name before deciding whether to buy it.
The Names That Will Get You Sued
I’m now going to give you two out of five examples of unusable “brand names” that are currently for sale on BrandBucket. The remaining three will be covered in Part II of this post. If you buy and use any of these domain names for their obvious industries, you will almost certainly be infringing on somebody’s trademark rights.
Even worse, BrandBucket actually recommends that you use these domain names in industries where companies already own trademark registrations for similar names.
There’s no plausible deniability for BrandBucket here: they are expressly recommending that you pay them thousands of dollars to do something that will potentially make you liable for tens of thousands in damages.
1. Drinktionary.com for $8,155: A unique brand name that somebody already owns
Sometimes a distinctive word is already trademarked even though it’s available as a dot-com. And sometimes the name is so thematic that it can really only be used for one or two purposes.
Here’s BrandBucket’s description of this name and its possible uses:
“A witty blend of “drink” and “dictionary” with a clever and memorable quality. Possible uses: A cocktail recipe website. A bartending school. A bar and lounge. A beverage industry magazine.”
Not surprisingly, all of its suggested uses involve some kind of drink-themed website.
Unfortunately, “Drinktionary” is already a registered U.S. trademark. Specifically, it’s registered in connection with various entertainment services. It seems that it was likely filed with the intent of making a television quiz show about alcoholic beverages, but it was registered much more broadly than just that specific use.
So right away, it’s clear that most of BrandBucket’s suggested uses are out. Recipe websites and beverage magazines are entertainment services that would likely be infringing on the trademark rights conferred by that trademark registration. Bartending school would also fall under class 41, the education and entertainment class, so it’s too dangerous to move forward with as well. Other obvious uses like a board game or video game are also out, because those are also closely related to quiz shows and other entertainment services.
Perhaps you could still use drinktionary.com in connection with “a bar and lounge” as suggested by BrandBucket? Well, unfortunately, the news about this trademark is worse than it first appears. “Drinktionary” is owned by BrewDog, the “largest craft brewer in Europe,” which produces almost one billion liters of beer a year.
This fact really puts the final nail in the coffin for Drinktionary.com. Large companies like BrewDog aggressively police their trademark rights, going above and beyond the protections afforded by trademark registration.
In my career as a trademark attorney, I’ve had big companies come after my clients for all kinds of reasons. With their massive legal budgets, large brands can steamroll over small businesses easily. Almost none of my clients can justify spending tens of thousands of dollars to fight back against a company willing to drag a dubious lawsuit out for years. It’s almost always a better idea to just rebrand when a giant company has an issue with your brand name.
In a situation like this, where the defendant’s very distinctive brand name is identical to one owned by a major beverage company, the case against my client would be stronger than about 90% of the challenges I get from big companies.
With these facts available to you, you would have to be a complete idiot to purchase drinktionary.com for pretty much any appealing use case.
BrandBucket is trying to sell you a lawsuit for $8,155.
2. SkinnyChow.com for $2,960: Sometimes Huge Companies Own Common Words
This one’s almost unfair to BrandBucket, because this brand name arguably isn’t infringing on anybody’s trademark rights. But that doesn’t matter to food industry giant Nestle because they believe they own the word “Skinny” in connection with food. Nestle asserts that this common branding word belongs to them because of their “Skinny Cow” ice cream brand.
A cursory trademark search wouldn’t really reveal the problem that makes the name “SkinnyChow” a nonstarter. But my own experience as a trademark attorney has led me to put “Skinny” on my list of words not to use in certain industries. So far Nestle has challenged applications I’ve filed for “Skinny Squares” and “Skinny Cheesecakes.”
I actually managed to get Nestle to back off in both cases, but the first time it was because Skinny Squares was my own candy bar brand. I fought Nestle tooth and nail at no cost to myself until they withdrew their opposition. The Skinny Squares trademark and SkinnySquares.com domain are now listed for sale as a bundle on Communer.
The second time, Nestle’s lawyer threatening to oppose my client’s “Skinny Cheesecakes” trademark was the same lawyer I fought over Skinny Squares, so she ended up leaving my client alone and reserving the right to oppose my client later if the branding was too similar to Nestle’s.
Skinny Chow is even worse than Skinny Squares and Skinny Cheesecakes because it sounds very similar to Skinny Cow. A decent trademark attorney would notice the similarity and bring it up in their legal opinion, even if they’re not familiar with Nestle’s claim on “Skinny.”
Imagine buying SkinnyChow.com for $3,000 on BrandBucket, only to get a cease-and-desist letter from a $300 billion company telling you they’ll sue you if you keep using the “Skinny Chow” brand name and domain. Nestle’s legal budget alone is probably in the hundreds of millions. Are you really going to pay a litigator $500 an hour to attempt to fight them off? After six hours of legal work, you’ll already have spent more than you wasted on the domain.
More Problematic Domains Coming in the Next Post
I’ll have three more lawsuit-worthy BrandBucket domains for you next time. One of them might get you sued by Uber while another might get you sued by Ben and Jerry’s and the estate of Jerry Garcia. But hopefully you’ve gotten the message by now:
Domain names are not brand names.
Buying a domain name for your new business does not give you the right to use that name, nor does it protect you from trademark lawsuits. Don’t spend thousands on a domain name unless you know you can use it and register it as a trademark.
The easiest way to do this, of course, is to buy a domain name that comes with its own registered trademark.
