How to protect your brand by Trademark Registration?

Need some advice on trademark registration

[uniquejosh]

Hi everyone,

I am gonna launch my site and my solicitor suggested me to register the brandname of my website. I did some search and got a bit confused. My company is UK based but this is internet and my market will be more than UK. Do I need to register trademark in every country I might have business there? Or is there any specific rule or procedure for online business?
As to the trade mark, we use our logo doing three different kind of combination: Logo only, logo with slogan and logo with URL link. Do I need to register them separately or I can see them as one thing but different forms and just do one trademark application to protect all?
Apart from trademark registration, anything else I need to do to protect my brand? Please kindly let me know. Thanks a lot

Josh

[davezan]

Do I need to register trademark in every country I might have business there? Or is there any specific rule or procedure for online business?
As to the trade mark, we use our logo doing three different kind of combination: Logo only, logo with slogan and logo with URL link. Do I need to register them separately or I can see them as one thing but different forms and just do one trademark application to protect all?
Apart from trademark registration, anything else I need to do to protect my brand? Please kindly let me know. Thanks a lot

You can try to register all country codes if you can afford it and can meet all
their requirements. There's no one-size-fits-all solution.

For the trademark questions, see an attorney with real-world experience. This
is a webmaster forum, after all, not a legal one. ;)

David

[rocknbil]

As one who has secured a U.S. trademark - on one hand, I agree, a trademark attorney is a very good idea.

However, I will also say, if you're willing to spend hours and hours digging through legal documentation and are confident you understand their meaning, you can successfully define and secure a trademark yourself, without the fees of an attorney.

In the U.S., any submissions for trademarks are assigned an attorney anyway, did you know that? The USPTO assigns a trademark attorney to review your application, and if you have misunderstood the legalese it will get bounced with the requirements you need to meet to continue the process.

The original question, however, International marks, may demand that you confer with a lawyer, but you may find the answer here:

United States Trademark and Patent Office [uspto.gov]

Although it's the USPTO, there is a wealth of information there in reference to International TM's. For U.S. TM's, you can search the USPTO for existing marks, apply for a mark, and monitor the entire process as it proceeds - ours took about 9 months.

[Lexur]

You must register your trademark in the countries where you would protect it.

My own case:

I owned a few domains for a few years and I want to protect the domains (not the trademark) against other companies.
I went to the spanish trademark office and I registered my trademarks (just the name, not the logo nor anything else).
Now my domains (.com) and national trademark are protected.

Q&A

- What if someone register the trademark in another country?
I don't care. I own the .com domain and I'm protected by the spanish and the international trademark laws. Of course, I own the .es too.

- Another one can register mydomain.us and go online?
Yes, he can. But not only the .us domain but the another 150 national domains. It would give me some hype and, after all, my old .com will be always in the #1 spot.

- There is a big company in another country with the same trademark; can I register this trademark in my country?
Yes, you can but most big companies can easily afford the whole world registration process and have already done it.

[afaik]

{Sorry - Not sure if I should post this under a new thread as it might seem like a hijack, but I felt that my case falls nicely under this already existing thread title...}

Someone already has the NAME.com of the business name I want to brand, and I doubt that they will sell it. I have emailed them once already, but no reply.

They are using the .com to redirect to another site with a completely different name, with no mention of NAME or NAME.com

I would like to trademark the name for the purposes of doing business online, using NAME.net, NAME.ca, and NAME.mobi, or possibly NA-ME.com with a hyphen in it.

If I start using the NAME.net etc. and apply for a trademark, what happens later if the other owner of NAME.com decides to start a business competing with my own, under the same NAME?

I'm assuming that if I trademark NAME for my purposes first, and show that I started using it first that is more important than who registered the NAME first, no?

Should I give up unless I can secure the .com, and move on to a different name? The NAME is quite good and especially fits to my business model. How best to go about purchasing the NAME.com in this case?

The current registrant is in African country, and I'm in Canada. My business could have clients from any country. Should I register a trademark in Canada and the US first? How about the African country as well?

Many thanks.