Another Trademark Question...

[BlackDiamond]

This is a little off the wall for a domain name forum, but I feel I'd better ask.

Suppose I had a catchphrase or made-up term that was very unique and brandable, but was as of yet an unregistered trademark. Assuming that the I had no desire to engage in a commercial enterprise, would it be feasible to trademark this term if I don't plan to engage in commerce? Or would use of this term this simply fall under copyright law?

 

[DNQuest.com]

This is a little off the wall for a domain name forum, but I feel I'd better ask.

Suppose I had a catchphrase or made-up term that was very unique and brandable, but was as of yet an unregistered trademark. Assuming that the I had no desire to engage in a commercial enterprise, would it be feasible to trademark this term if I don't plan to engage in commerce? Or would use of this term this simply fall under copyright law?

TM is a name of a product/service/business that has acquired secondary meaning in commerce.

Copyright is protection of published works.

I'm o fer 2 here for you.

If you have a phrase, use it in commerce somehow if it is that inportant. Also, do a poor mans record of it by sending a certified return receipt mailing to yourself with the phrase inside envelop. When you get it, do not open it, keep it sealed and only open in court.

 

[BlackDiamond]

So you mean you can come up with a name or a phrase that is completely unique and use it in a way that is clearly attributable solely to you, but there's no way to legally protect it unless you decide to go into business? :td:

Well, that saved me a few hundred bucks.

 

[DNQuest.com]

How many times have you heard "they stole my idea". But dont give up, document your ideas and establish proof of timelines.

 

[tricolorro]

This is a little off the wall for a domain name forum, but I feel I'd better ask.

Suppose I had a catchphrase or made-up term that was very unique and brandable, but was as of yet an unregistered trademark. Assuming that the I had no desire to engage in a commercial enterprise, would it be feasible to trademark this term if I don't plan to engage in commerce? Or would use of this term this simply fall under copyright law?

:hi:

The short answer is NO!

From USPTO.gov, excerpted:

"BASIS FOR FILING

The application should include your "basis" for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future.

"Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce,..."

"What is "intent to use"?

If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application.

An "intent to use" application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce."

Read the full story here:
http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm#basis

Patrick

 

[Name Trader]

GoDaddy trademarked "the web is your domain". So it's obviously possible to trademark a catchphrase. You should of course use your trademark.

 

[BlackDiamond]

Thanks for the replies. It's just that as an individual who is a hobbyist and not a commercial entity, I feel like I'm trapped. If I come up with a good, brandable name and even publicly establish myself with that name, then a corporate entity or sole proprietor can lay claim to that name, and while I might not be barred from using it, I wouldn't be able to enforce any exclusivity on it either. Yet despite having no desire to go into business at this time, establishing a commercial identity would be the only way for me to have some measure of protection. Still, that comes with its own legal/tax hurdles, and I have enough headaches in my own life.

Sorry for rambling, but it appears the laws afford greater protections to businesses and organizations than individuals.

 

[Ronald Regging]

Thanks for the replies. It's just that as an individual who is a hobbyist and not a commercial entity, I feel like I'm trapped. If I come up with a good, brandable name and even publicly establish myself with that name, then a corporate entity or sole proprietor can lay claim to that name, and while I might not be barred from using it, I wouldn't be able to enforce any exclusivity on it either. Yet despite having no desire to go into business at this time, establishing a commercial identity would be the only way for me to have some measure of protection. Still, that comes with its own legal/tax hurdles, and I have enough headaches in my own life.

What purpose would it serve to establish or associate yourself with a name, if not for commercial enterprise?

The entire point of intellectual property is to protect the owner in commerce, where confusion and other factors can lead to a loss of profits. If you aren't using it in commerce, than you have nothing to lose...

It is possible to establish rights to a name through usage, you don't actually have to file any formal documents. However, even with a registered TM or Copyright, the costs associated with actually enforcing those rights are extremely high.

 

[Dave_Z]

Sorry for rambling, but it appears the laws afford greater protections to businesses and organizations than individuals.

Considering that businesses invest time, money and effort into protecting their
interests and investments, more so from those who seek to commercially ride
on their hard-earned success, there is nothing necessarily wrong with that.

 

[BlackDiamond]

What purpose would it serve to establish or associate yourself with a name, if not for commercial enterprise?

The entire point of intellectual property is to protect the owner in commerce, where confusion and other factors can lead to a loss of profits. If you aren't using it in commerce, than you have nothing to lose...

It is possible to establish rights to a name through usage, you don't actually have to file any formal documents. However, even with a registered TM or Copyright, the costs associated with actually enforcing those rights are extremely high.

I'd associate myself with a name to shape my own identity without having to formally change my legal name.

I would argue that I do have something to lose by not trademarking. In the event that someone else does trademark the name, it would be associated with that other party. As I mentioned, the term is somewhat unique and isn't a mere portmanteau or combination of generic terms or dictionary words. If that party who does take it becomes a commercial failure, then it devalues you for using the same mark for non-commercial reasons.

It seems like it's the complete opposite of registering a domain name. Assuming there are no "issues" (you know what I mean), the registrant has exclusive rights to lease that domain name for a relatively low price. Then that person can sell that domain name to any person he or chooses, or that person has the option to not be a commercial entity. Yet for a trademark, there are more stringent rules, hurdles, and expenses just for business use, and no equivalent in the non-business world for people.

I had little intention of becoming a commercial presence, but I had considered getting one based on a deterrence factor. I know trademark issues occur on the Internet undetected and undeterred, but having a registered trademark is better than not having a trademark (since you aren't doing business) and someone registering a domain name suspiciously similar to that mark. At least you may have a case in the former scenario depending on the usage, but you wouldn't have any case in the latter one.

I'd hate it if I made a site for personal reasons that while not popular, got discovered by someone because of a term or mark I used in with conjunction with that site, then that someone else used it and reserved the mark for their own, exclusive use. It's not about money, but about identity.

Considering that businesses invest time, money and effort into protecting their
interests and investments, more so from those who seek to commercially ride
on their hard-earned success, there is nothing necessarily wrong with that.

Personally, I've always thought the right of an individual should trump the right of a business. After all, why should one have to have a business to make money, or better yet why shouldn't one be free to not make money without having to sacrifice one's identity?

Maybe I'm looking at "commerce" too narrowly though. What does buying and selling domain names fall under?