Trademarking your business or domain name

Anyone have experience in this?

[scott]

I've had a business online for about a year now. recently, I was made aware that someone else was using my business' name. I figure it's only a matter of time before they hit the internet.

I've been to the site to register my business name, but they don't really give you all the costs involved. They just kinda lead you down the path of getting the process started.

Is it enough to trademark "My Business Name" or will I need to trademark "mybusinessname.com" as well? And what are the costs involved? Anyone have any experience with this kind of thing?

-Scott

[rcjordan]

Actually, you may need to trademark your logo, too. If I were just protecting my turf and needed to watch the budget, I'd trademark the business name. Subsequent trademark searches by competitors would then likely return your mark and deter them.

Expect to spend US$1500 - 2000 per trademark. There are no gurantees that you will be awarded the mark, but you can ask for a preliminary review which will give you a good idea if you're going to run into trouble. But just getting to that decision point can cost you $500 or more in legal fees.

Also, search on "trademark" down in the domain name forum, NFFC once put up a free online search site that was pretty good.

Oh, and don't be too surprised if you learn that YOU are already infringing on someone else's mark.

[scott]

YIKES! Thanks for the info, rc!

[Marcia]

scott, was the other one in use before yours, and is it the same type of site and/or company as yours?

rc, any thoughts on what will happen when the biz domain names become available, and could duplicate already existing com sites for the names?

[scott]

Apparently, they've not hit the internet yet (that we can find). They are dealing in the exact same business. The latter fact is what makes me suspicious that they copied the name. I'm still investigating when they started doing business under the name.

-Scott

[rcjordan]

Yes, good point, document the date that you first started using the name/domain/logo. You'll need that for your application anyway. All other things being equal, the date of first use will be a big determining factor.

>rc, any thoughts on what will happen when the biz domain names become available, and could duplicate already existing com sites for the names?

Oooo, good question! In the US, I'm pretty sure that a dotcom domain trademarked earlier could effectively challenge and take away a dotbiz that came later.

(standard 'I'm not a lawyer disclaimer' goes here)

[Marcia]

I wish there were some more information available about what's technically "common-law" trademark. I understand that a name can belong to someone by reason of usage. I had an incident concerning this about a year ago.

I have some graphics up, and had referred to them as plain vanilla graphics. It's just a little subdirectory, the site is not called that - it's an idle pastime. Some lady, however, found me with a search, probably at AV, and emailed me saying she had been using that name for a several years, and that she owned the trademark by reason of usage.

Hers was a free site someplace, hard to dig out even with a search for the name - it's not in the page title or description. And the heading was a graphic, not text. She was nice and I believed her. Also, I did find some information to support what she was saying.

I have the words still in a paragraph because it's relevant, but removed it from the page title and H1, and replaced it with the keyword phrase under which it's now found - which turned out fine.

Now I don't see how such a generic common usage phrase like plain vanilla can possibly be trademarked, but I complied with her request and wrote her back nicely.

If this other company has had no web presence, how would a person dig out information on whether they existed, with no trademark registration - easy to check out at the government patent site, which has a searchable database for trademarks:
[uspto.gov...]

However, how could someone check for the existence of such a company in every state? I also wonder if they could challenge a domain name already in business on the net if they had not had their own web site.

I really wonder how valid de facto trademark by reason of usage really is. At the very least, if it's not already done, for starters I would do a formal copyright on the logo graphic for $30 - just to establish some kind of a time frame.

[rcjordan]

I've never heard of a common-law trademark, doesn't mean it isn't out there, though.

>I don't see how

This is the most dangerous phrase in trademarks. Trademarks are not about logic or fairness -trademarks are turf wars, plain and simple. You can be blind-sided at any given point before, during, or after the process. I've sold one domain to a chemical company that holds trademarks on the name "Albemarle" (also one of England's Lord Proprietors), Albemarle is a widely-used geographic name in the Carolinas, dozens and dozens of small businesses use it in their name, assuming that it can't possibly be trademarked since its the name we call the entire region. Wrong!

The single-most important factor is money, as in how much money are you willing to spend to defend your mark or challenge one you feel is competitive.

The searches of other states and other countries (remember, the web exposes you to international challenges now -I've mainly referencing US trademarks) is part of what you pay for. Searching on websites, the .gov included, will give you only a fraction of the information.

[John_Wake]

I registered a trademark myself but it took a tremendous amount of study and about $450 in fees to the government. It's super complex issue.

In 1997, I found the best book to be "Trademark: Legal Care for Your Business & Product Name" from Nolo Press. It was about $30 bucks.

Since that edition came out in 1997, it's _much_ easier to research trademarks because the federal government database of trademarks is on the web at the address Marcia gave above. On the other hand, the .com names complicated the issue tremendously since 1997.

Your problem seems a bit messy with a competitor using the same name on a similar product in "interstate commerce." Sorry to say, but you probably need professional trademark help.

And like rcjordan said, don't be surprised if you find that you are infringing someone else trademark. There's zillions of 'em.

Hope that's helpful.

[rcjordan]

The searches on the web are still skimming the surface. For instance, you have to address category selection, intent of use, confusion of brands, etc., and SIMILAR brands -searches on the literal words just don't bring in all the potentially devastating fringe elements. I've had a lawyer advise me not to pursue one of my domains as a business name because it sounds like it should be a trademark that is held by a company that is known for its aggressive protection of its book titles (the "For Dummies" series). My domain does not have the words dummy or dummies in it, btw. I can, however, trademark the distinctive graphic which includes the domain name. Go figure.

[rcjordan]

added:

Just because you have a trademark, don't assume that's the end of it. Back in the 60's or early 70's Ma Bell sued a little firm down in Texas (I think it was TX) -Bell Accounting- for using their bell logo. As it turned out, and much to Bell Telephone's chagrin- Bell Accounting had registered the bell trademark before they had registered theirs. A search (then mostly by hand) had missed it. I believe they paid $5 million to be able to continue to use it for the telephone monopoly.

This happened last year, too. The Masters golf tournament sued someone (Masters.com, I think), they were counter-challenged as to the validity of their own mark. The last I heard, they were in jeopardy of losing it for the golf tournament.

[rcjordan]

here ya go...
When is a Domain Name Considered a Trademark? [gigalaw.com]

Hey Marcia, look at this title on Law.com -too bad it's a subscription site.

Intellectual property: Protecting Trademarks From the Threat Posed by New Internet Domain Names

[willtell]

I recently did what you you are asking about and here's what I fond out. Get a patent and/or trademark attorney to do Thomson & Thomson search. This the most compresensive search you can do and usually cost about $450 US dollars. This still does not mean you have full rights to a trademark. There could be one in the pipeline or pending and you will not know until you pay to have yours processed. You can go to the US Patent and Trademark web site and fill out the forms, pay the $325 per class fee and take your chances. But be warned there are many tricky items that you will not know. For instance, if you don't put the tradename in all caps you are only registering that exact pattern you type in. This is why it is sometimes worth the money to have an attorney do it. They can save you lots of headaches but at the same time, I have been ripped off by them. They have of way of running up bills that can border on the ludicrous. Hope this helps.

[Brett_Tabke]

An interesting site full of related trademark and corporate (llc) info I got from DrBill:
[bizfilings.com ]
And one on trademarks:
[nameprotect.com ]

Anyone used either of them for trademark work?