Trademark domains

[Kasa7]

I was wondering if i register domain name and just keep it parked or jus keeping it not even developing site, nothing.

Can someone trademark that name in future and then i could have legal problems?

Thanks

 

[ecuadorbusiness]

You won't, unless you or anyone else who uses the domain name does it on the same way than the one who trademarked it.

You can name your site apple dot whatever and use it freely as long as your service or product is not related in any way to the electronic products from Apple, otherwise expect a nice lawsuit and the consequent loss of your domain and business.

 

[damic25]

Correct. If you register a name now, and then 10 years from now someone starts a business with that name - you are "grandfathered" so you don't have to relinquish the domain to them (though, they are a good candidate to buy it). However, if you start a business using that domain, and it is similar to them and/or offering any of the same information/content/products - then, if they have a TM, they can certainly come after you and potentially shut you down, take your domain, etc... like like ecuador mentioned.

 

[Kasa7]

And if someone already have trademark but only .net extension (but i doubt any trademark would put .com left out) can i buy .com and sell it to them or have it parked?

or

If someone registers trademark at .com but leaves other extensions, can u buy them if i have intention to sell it to them(or someone else) or have them parked?

 

[damic25]

You have to be very careful. This sounds more like you are wanting to buy some domain related to an established trademark. If so, that's shaky ground and it would be better to talk to an attorney than try to get help from anyone here.

As far as a trademark is concerned... don't think so much in terms of "if there is a trademark for .com". Trademarks are rarely that specific, unless the person who got a TM only TM'd the .com, which doesn't make much sense normally. A trademark covers the entire business... for instance, Microsoft's primary trademark isn't .com or .net - it's simply Microsoft. They may add a TM for .com, .net if they so choose... but their primary TM is what gives them the complete protection.

If you are unsure how to really check TM's - check out the USPTO and do some searches.

In my opinion - I'd say leave those types of situations alone, but it's completely up to you. I'm sure there must be other people around here with their own thoughts on it too. Better yet, come up with your own idea and then you can get your own trademark too.

The point is, don't put yourself in a position where you are risking any legal ramifications. Just my 2 cents.

 

[Kasa7]

That is why i am asking so that i can avoid any Trademark problems.

I want to know every possible situation.

I saw some companies who own .com but dont have made their name trademark so i was wondering is it worhy to buy .net or some other extension

 

[damic25]

No worries... I completely understand. If you see an opportunity, go for it. I'm certainly not saying that you shouldn't. I am just suggesting that you are cautious and aware of any possible legal issues that may arise.

If you see something like a group has a .com but does not have the .net.... check to see if they do have a trademark, if not... check to see if their .com was developed. It's possible they would have interest. But then again, they may also already be aware that the .net is available and just don't care about it (for whatever crazy reason). In that case, you wouldn't be risking any possible legal issues, which is good... but may wind up stuck with a domain that they don't even want for any price. It's always possible.

 

[Kasa7]

If you look many new companies that have website developed have only .com and are not tredemarked. I mean look at Namerific or Brandbucket clients.
But as I read this forum different persons have defferent opinion about this situations.

Someone wrote on this forum:"You can claim TM rights without having a registered TM. Registered TM just makes it official and more difficult to challenge.
If you buy that domain with the knowledge that there is a company developing a product by the same name, it would be easy for them to argue that you are holding the domain hostage while having no legitimate use for it."

I guess it is all about is person willing to risk it.

 

[ecuadorbusiness]

Not only the companies you have named but a lot of businesses share the same name without trademark in different extensions. What you want to do is registering a non taken extension with the name of a company to sell the domain to them later. If I understand correctly then I think you will be wasting your time and money. Why would the company buy a domain from a flipper when they had all the time to register the name by themselves? However your better strategy would be to localize dropped domains that were used for a company competitor and then sell it to that company but doing so will take you hours and hours of researching but if you think that is the niche of domaining you would like to enter then I think there is always the chance to do some money. Good luck.

 

[damic25]

If you look many new companies that have website developed have only .com and are not tredemarked. I mean look at Namerific or Brandbucket clients.
But as I read this forum different persons have defferent opinion about this situations.

Someone wrote on this forum:"You can claim TM rights without having a registered TM. Registered TM just makes it official and more difficult to challenge.
If you buy that domain with the knowledge that there is a company developing a product by the same name, it would be easy for them to argue that you are holding the domain hostage while having no legitimate use for it."

I guess it is all about is person willing to risk it.

Yes, a lot of it depends on your own willingness to risk anything. True, there are a lot of different opinions and thoughts on the matter. A lot of what is good or bad is all up to a person’s own perception and/or knowledge of the subject.

Technically, you can "claim TM rights" anytime you want, with or without having a true TM. However, it doesn't protect you in any type of legal situation. However, there is something known as "first use" when registering a TM - that can then be indicated in the TM to help extend the overall coverage of the TM itself, if that makes sense.

Getting a TM is a process that generally takes a little time. There are also different forms of Trademarks... both Federal and State level (here in the US), and of course, International Trademarks. It's possible you investigate a company and find out that they may only have a State TM (for instance in California), but that they do not have a Federal TM. That can also play a role on what can be done in some cases.

Not to mention, if you FILE for a TM today, it will still take at least a couple of months (in most cases) to finalize/approve a Trademark. However, at the end of the process, and if you have been approved for the TM, your protection would begin, pro-actively, to the point that you originally filed/registered for it. So in that case especially, if you file today - you don't technically have a TM yet. However, you can indicate a Trademark on your logo/site, for instance. Then if the Trademark that you filed finalizes and you are approved – at that point, you can officially represent that you hold a TM and your "first use" would be on the day you filed the TM, and/or a demonstrated date prior to that.

Of course, I will state again, I am NOT an attorney, only sharing what I know of TM’s as I have some experience setting some up myself years ago. For any questions that you really need solid answers for (if you are concerned about a domain you have, etc) – maybe consider taking to an actual trademark attorney and/or at least on a site like LegalZoom, etc.

 

[Chris Wright]

If a name is not used in a generic way, it can be a protected mark simply by widespread public usage.
The next tier of protection is to add the TM symbol to the name.
That is what you could call common law trademark.
The top tier of active protection is to apply for, and receive, a registered trademark.
Then your TM symbol can become a circled R symbol.
Each of these can be enforced through court actions.
Of course, these trademarks are normally protected in a particular area of trade.
Dove chocolates do not infringe upon Dove soap.
If you don't understand the distinctions, then tread very lightly.
The ACPA allows for huge fines for squatting on trademarks.

 

[alien51]

You guys should read the WIPOs on this subject matter. You are not going to believe it. Some of these panelists are a bunch of natzees.

 

[damic25]

Lol alien... will have to check that out.

Also, DBD - great points and explanation. I actually have 2 trademarks, so I've been through the process of setting them up, dealing with approval periods, and even having to send cease and desist letters.

With anything like TM's and licenses, there are at times some "gray" areas and loopholes. You just have to be aware of what those might be, and understand exactly what their specific TM may protect. As long as you don't infringe directly on someone's TM, then you are generally safe and can even apply for and most likely get your own TM. The issue comes in if you do anything that infringes on any TM. That can potentially get very ugly very quickly.

Just like DBD was saying - you can simply create a logo and put "TM" next to it. That is, like DBD mentioned, more considered "common law". Anyone can do that, but in the end, it is NOT an official trademark that you actually have documentation on, etc.

Best advice I can think of is to just be smart about it - and find out all you can about any potential pitfalls.