How to properly trademark a domain name?

Discussion in 'Legal Issues' started by AlwaysThinking, Jun 29, 2007.

  1. #1
    I am kinda do it myself guy. I actually just trademarked a domain name couple of months back with USPTO on their website. Took 10 minutes and a little over $300. So basically its a new non dictionary word that I think has potential of becoming catchy.

    Lets say the domain was widget.com and I just trademark the word widget and choose online widget site as categories and bought all the top level TLDs, was that the right way to go?

    Or should I have trademarked widget.com insted of the word widget?

    BTW I did some search and the word I trademark is already showing up in the USPTO database now under my company name. No one else has trademarked this word so far in any other business category what so ever.
     
    AlwaysThinking, Jun 29, 2007 IP
  2. ChrisGunn

    ChrisGunn Peon

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    #2
    If you read the panel discussions for WIPO UDRP decisions they all basically say that the .tld (in your case .com) is inconsequential and that any trademark.tld (trademark.com, trademark.net, trademark.org etc) will be confusingly similar if somebody should try to infringe by registering and using another trademark.tld in bad faith.

    So as a matter of policy 'trademark' should protect 'trademark.com'.

    Any other thoughts?

    P.S.
    You wrote:
    If you are a do-it-yourselfer, that's a smart move. You are unlikely to find any opposition. I have abandoned what I considered a legitimate trademark application just because one of the biggest 'widget' companies threatened a law suit. Regardless, of what rights I thought I had, strategically it was better to just walk away.
     
    ChrisGunn, Jun 29, 2007 IP
  3. primeelite

    primeelite Peon

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    #3
    I usually use Legal Zoom for a lot of my legal dealings. Is it easy to do it yourself if you have never trademarked before?
     
    primeelite, Jul 1, 2007 IP
  4. AlwaysThinking

    AlwaysThinking Well-Known Member

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    #4
    As I said, took me 10 minutes to understand and I did it. Already got pseudo mark awarded. Lets see what happens in the long run without a lawyer though.
     
    AlwaysThinking, Jul 1, 2007 IP
  5. nusuni

    nusuni Peon

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    #5
    Just make sure you protect your trademark like crazy! Toss notices to anyone who infringes it, or you risk having the word becoming genericized thus becoming worthless. (like iPod->MP3 Player, Tylenol->Pain reliever)
     
    nusuni, Jul 1, 2007 IP
  6. primeelite

    primeelite Peon

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    #6
    Trademarking is no cheap thing either, so if you are going to spend that kind of money you can easily pay a small amount of money to have a company watch basic things such as business registrations and public records, blah blah to make sure no one is infringing on your trademark
     
    primeelite, Jul 3, 2007 IP
  7. AlwaysThinking

    AlwaysThinking Well-Known Member

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    #7
    Thanks for all the advice guys. Kinda excited about this. Anyone who I have mentioned this new 'word' had a jaw dropping reaction along with you got the domain name also reaction.
    I basically registered most variations and TLDs also.
     
    AlwaysThinking, Jul 3, 2007 IP
  8. Dave Zan

    Dave Zan Well-Known Member

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    #8
    You mean you already have a trademark for the term at the USPTO? Although
    I freely admit have no experience in this, one thing I learned from a few who
    do specialize in this is the USPTO doesn't grant such "just like that".

    What you minimally did was file an application. The USPTO will ultimately say if
    your application will be granted trademark status if you do everything as they
    ask.


    In any case, good luck with the process. Enforcing your trademark rights can
    also get expensive, so be ready for that.

    Besides, it won't be fair to other parties who worked hard to attain trademark
    status for their respective applications after a year or so. ;)
     
    Dave Zan, Jul 3, 2007 IP