How easy is it to apply for TM online?

[Name Trader]

How easy is it to apply for TM online?

I remember 2 or 3 years ago looking to apply for a TM online, and thinking it wasn't too hard. But I now want to protect one of my domains with a TM, and started looking at applying for a TM via USPTO, and it all nows seems gobble-de-gook. What a difference a couple of years make. Phew!

 

[Jaco]

It isn't an 'apply online' sort of a process for laypeople, but it can be done if you really insist on it.
http://www.uspto.gov/teas/e-TEAS/index.html

I have two and had another two rejected. It can be tricky. Also, bear in mind that you really can't undertake 'defensive TM registrations' whereby the only reason for your registering a TM is to protect some interest in a domain name that isn't being used.

The TM system was set up to protect against exactly the sort of speculation we saw with premium domain names, where parties who had no interests in Sailboats or Guitars or Boxes nevertheless could secure Sailboats.com, Guitars.com, Boxes.com and hold legitimately interested parties out for ransom. In the TM process, you actually have to be using your TM in a productive commercial capacity, in addition to raising cases against blatant infringement- lack of performing certain performance TM ownership protocols can actually have your TM invalidated or 'abandoned'.

 

[Domagon]

If you're not actively using the trademark yet in commerce, but plan to in the near future (within the next two to three years), then check the "Intent to Use" (ITU) option (it may be selected already) when filling out the application.

The primary advantage of an ITU is establishing a "date of first use" despite not using the trademark yet in commerce yet.

With all that said, filing a TM costs around $350 +/- per class. So it may be worthwhile to have an experienced TM attorney do a cursory review, at minimum, of your trademark and filing the forms on your behalf.

On a related topic, the domain name system is changing a lot - between proposed vanity gTLDs (ie. .canon, .ibm, etc) and integrated search into the web browser (not talking the search window, but within the address bar like in Google Chrome) most generic domains in and of themselves will have limited usefulness going forward...

In short, you may do better to create / buy an unique brandable domain and use that instead of spending hundreds to thousands on TM registrations that may be rejected and/or not protect you in a domain dispute anyways.

Ron

 

[Name Trader]

Thanks for your thoughts guys.