Registering a Trademark and Domain Names

[td3434]

I've got a question about domain names and trademarks.

I have a domain with a descriptive (read: made-up) name for my services (pure on-line services). I don't have enough money to register a trademark right now, and I'm not really sure if it's worth it, because I have a couple of domains like this and I don't know how they'll turn out. One of them might become successful, or all of them might turn out to be a flop.

But should the domain in question become successful and well-known, I want to register the name as a trademark.

My question is this: Could an evil adversary, who figures out that my well-known site name hasn't yet been registered as a trademark, register the name as a trademark before I can do that and legally grab the domain name from me? Or would common law protect me in this case?

I've already googled a bit, and found conflicting information. There are people who say this is possible, but it's mostly people who are selling trademark services, so I'm careful. They might have conflicting interests.

Thanks in advance.

 

[enlytend]

They won't be able to register the tm without showing proof of use or intent to use. If someone beats you to using that name, as long as you don't squat on THEIR business you should be OK.

I have a domain with a descriptive (read: made-up) name for my services (pure on-line services).

BTW, that's not "descriptive" when you're talking tm's. You might want to look up what a "descriptive" mark is. Descriptive terms can't be tm'd UNLESS someone proves it has become associated with their brand.

 

[Asaf]

Trademarks are really tricky & flexible and the low can be very influenceable,

Do you remember the Nissan lawsuit -


" Nissan Motor Sued Nissan Computer For Trademark Infringement,

Trademark Dilution And Cyber-Squatting
Seeking 10 Million Dollars In Damages

This is after more than 20 years of Mr. Nissan's well-documented prior use
of his family name for business purposes in the United States
which he commenced when the cars were known as DATSUN. "

You can read more about it here :

http://www.nissan.com/Lawsuit/The_Story.php

And, Do you think google waits for their products to be famous first and then trademark them - of course not!

Now, I know you're not google but either way you should embrace their mindset and don't wait to long.

anyway, this is only my humble opinion

 

[td3434]

They won't be able to register the tm without showing proof of use or intent to use. If someone beats you to using that name, as long as you don't squat on THEIR business you should be OK.



BTW, that's not "descriptive" when you're talking tm's. You might want to look up what a "descriptive" mark is. Descriptive terms can't be tm'd UNLESS someone proves it has become associated with their brand.

Oh yes, you're right. What I mean are "fanciful trademarks."

---------- Post added at 04:59 AM ---------- Previous post was at 04:58 AM ----------

Trademarks are really tricky & flexible and the low can be very influenceable,

Do you remember the Nissan lawsuit -


" Nissan Motor Sued Nissan Computer For Trademark Infringement,

Trademark Dilution And Cyber-Squatting
Seeking 10 Million Dollars In Damages

This is after more than 20 years of Mr. Nissan's well-documented prior use
of his family name for business purposes in the United States
which he commenced when the cars were known as DATSUN. "

You can read more about it here :

http://www.nissan.com/Lawsuit/The_Story.php

And, Do you think google waits for their products to be famous first and then trademark them - of course not!

Now, I know you're not google but either way you should embrace their mindset and don't wait to long.

anyway, this is only my humble opinion

Wow, that Nissan/Nissan case is really awful. Thanks for the hint and your recommendation.

 

[CurtisNeeley]

If you have the domain and are using it in commerce it is already a TM and you are safe. If they attempt to register it to perform cyberpiracy they lose. A domain used in commerce will soon be recognized as a TM by the Supreme Court I believe.

 

[td3434]

If you have the domain and are using it in commerce it is already a TM and you are safe. If they attempt to register it to perform cyberpiracy they lose. A domain used in commerce will soon be recognized as a TM by the Supreme Court I believe.

Interesting. I couldn't find much information about that, however. Can you provide me with some links to this or similar cases or applicable law?

Thanks.