If you become involved in a domain name dispute, are having trouble getting your mark registered or simply want some advice from a professional, you may want to consult a lawyer but not just any lawyer. Start by understanding that if you have read substantial portions of this article you already know more about domain names and trademarks than most lawyers do. This puts you in the difficult position of finding someone who knows more than you do and yet is willing to acknowledge your considerable competence.
We know of no sure-fire way to find such a rare creature, but here are what we think are some good suggestions.
Finding a Competent Lawyer
Trademark lawyers (including those who specialize in domain name issues) usually advertise in the Yellow Pages and legal journals as intellectual property specialists, able to handle patent, trademark, copyright and trade secret cases. State and local bar associations may also keep rosters of intellectual property attorneys. Such ads and listings can be misleading because most intellectual property law specialists tend to be very knowledgeable in one or two areas of intellectual property, and only passingly familiar with the others.
You want a lawyer who really knows trademark law as it pertains to domain names, not just someone willing to brush up on the subject at your expense. So when you call on the intellectual property specialist, ask these questions:
•Do you have experience with domain name disputes? If so, what types of disputes have you been involved in? Any experience with domain name litigation (taking a case to court) or NSI or ICANN dispute procedures?
•What percentage of your practice involves domain name disputes?
•How many trademark applications have you filed with the PTO to register domain names?
•Are you a member of the International Trademark Association or the American Intellectual
Property Law Association?
The first three questions will help you find a true specialist in this area, while the fourth will help you find a lawyer who is involved enough with trademark issues to join an association of trademark specialists.
