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question Trademark registration questions & concerns

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Hi all,
I'm in the domain business since 19 years now but I've never thought to register a trademark so far.
I've recently discovered to own a nice typo (typo of a generic dictionary word) actually getting a growing flow or organic traffic so I'd like to trademark the whole domain (wordname.com) before starting to develop it, obviously withoit violating in any way the holder of the trademark on the generic word (let's suppose I own gealth.com which's getting indirect organic traffic from people looking for health.com just to explain in full the concept).

1. From where should I start to register an US trademark over 'Gealth.com' ?
2. How does the whole process work ? Should I wait for a registration approval considering I want to opt for the 'health' category ?
3. What will I be asked at the time of the registration submission ? Should I tell more about the use I wish to do of Gealth.com ?
4. Let's suppose the trademark will get approved and that I'll never use in violation of the main Health.com trademark/activity (I'll never join them as an affiliate and I'll get sure to develop a slightly diff. activity), will the Health.com owner be able to sue me for some reason in the future ?

Any advise would be highly appreciated, thanks in advance.
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
Though I am new to domaining but in my fulltime work I have dealt with trademark registrationsin USA

1. From where should I start to register an US trademark over 'Gealth.com' ?
- The cheapest way is to do by your self through United States Patent and Trademark Office website, the cost is USD 225 for basic workmark, there are videos and help sections, but there are high chances you might do some mistakes

- The easy way is to go on https://www.legalzoom.com fill all the information and an attorney/knowledgeable person will review your application, will suggest any changes and apply for a trademark on your behalf, basic fees USD 200+225 government fees.

- You can hire a professional trademark attorney, they will handle all the work and the chances are high for approval at first without any pending(Office Action), but they charge from USD 500 to 2000 + government fees

2. How does the whole process work ? Should I wait for a registration approval considering I want to opt for the 'health' category ?
The process will take a minimum of 9-12 months and if there is any pending then it gets delay for more 3-6 months.


3. What will I be asked at the time of the registration submission ? Should I tell more about the use I wish to do of Gealth.com ?
You should have your trademark in use before applying, you can't 1st apply and then use it. You will have to provide links to the website where you are using your trademark.

There are 45 different classes ( categories ). Health products can fall in 2-3 different category depending on the specific use and you should be very specific about the product and service making sure it doesn't overlap with your competitor's classes


4. Let's suppose the trademark will get approved and that I'll never use in violation of the main Health.com trademark/activity (I'll never join them as an affiliate and I'll get sure to develop a slightly diff. activity), will the Health.com owner be able to sue me for some reason in the future ?
Sometime the examining attorney will ask a kind of no-objection letter from a particular company if they find that your name is similar to your competitors, or sometimes just a written clarification,

You should also mention in your application that the word "Gealth" does not have any meaning in English or any other foreign language.

If the examining attorney does not raise any questions and you don't do any activities outside your classes then most probably there should not be any legal problems

PS: I am no expert in any legal matter's, the above points are made based on my personal experience and can't be treated as legal advice, you should consult an attorney for legal advice
 
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Thanks Shadeems, you helped a lot.
I can consider this matter solved and the thread closed.
 
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Questions like this one are sort of like asking how one might go about removing an appendix. Now, it's true, an appendectomy is not the most complicated surgical procedure, and if that's all you want to do, then you certainly don't need a whole lot of other medical training or knowledge to competently perform appendectomies.

The thing is, it might be a good idea to first figure out whether there is anything wrong with your appendix, such that performing an appendectomy would be something you actually need or want to do.

If you are talking about a typo of a generic word being used for purposes for which the generic word is, in fact, generic, then I'd first want to know what it is you believe applying for US trademark registration is going to do for you.

If your question 4 goes to the main point of what you are after - i.e. "if I have a trademark registration can someone else sue me?" - then it's probably the main one worth answering. Of course, someone else can sue you. Trademark owners sue one another all of the time. And, if that happens, then having done odd things in your application, having hired an assembly line operation to mindlessly file it, or having filed an application which was refused on the basis of similarity with a pre-existing mark, are all things which are going to put you in a worse position than if you had not filed in the first place.

The primary, and strong, defense for domain names which are typos of generic words and being used for purposes for which they are generic is that they are typos of generic words and being used for purposes for which they are generic. Filing for trademark registration throws your best defense into the trash, since it is a statement on your part that you don't consider the use to BE generic in the first place.

But just to clean up a few minor points...

US trademark registration applications can be filed on an "intent to use" basis. An intent-to-use application will be examined like any other. If it is eventually deemed allowable, then you will have to demonstrate use of the mark on the specified goods/services before it proceeds to registration. So, no, a mark does not have to be in use in order to apply for registration.

Here's a decision I obtained just today for a client:

https://www.adrforum.com/DomainDecisions/1857174.htm

Complainant is Pocketbook International SA / Batmore Capital Ltd. (“Complainant”), represented by Anna M. Vradenburgh of One LLP, California, USA. Respondent is Domain Admin / SiteTools, Inc. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

The domain name at issue is <pocketbook.com>, registered with TurnCommerce, Inc. DBA NameBright.com.


...

Respondent has rights in the POCKETBOOK.COM mark through its own trademark registration with the USPTO claiming the services of being a software application service provider (e.g., Reg. No. 4,099,793, registered Feb. 14, 2012).

...

One key factor is that Respondent has rights in the POCKETBOOK.COM mark through its own trademark registration with the USPTO (e.g., Reg. No. 4,099,793, registered Feb. 14, 2012). While the existence of a corresponding trademark registration does not automatically confer rights or legitimate interests on a respondent, it does require a complainant to show why the Panel should disregard a prima facie valid registration of the respondent (for example, where the evidence demonstrates that such trademark registration was obtained primarily to circumvent the application of the UDRP).


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Now, in this case, the Panel did not find that the Respondent's trademark registration "was obtained primarily to circumvent the application of the UDRP" but, quite frankly, the entire trademark issue was an unwelcome distraction in this proceeding. You'll notice under "legitimate rights" that the panel ended up with:

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Respondent claims to have legitimate interests in the <pocketbook.com> domain name. Specifically, Respondent argues to have made demonstrable preparations to use the domain name for a mortgage calculator and financing service. Furthermore, Respondent argues that the disputed domain name is comprised of the term “pocketbook,” which relates to mortgage and financing services. The Panel notes that such use of the disputed domain name for a mortgage and financing services website appeared to commence in 2014 and the domain resolved to a pay-per-click website with links to finance related topics as early as December of 2011. This considerable time period of use supports Respondent's contention that it has legitimate interests in the mark "pocketbook" in relation to a bona fide offering of services.
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In other words, the trademark registration - which was the subject of a huge amount of argument in the case - was really more of an unwelcome distraction to the fact that my client had been legitimately using a dictionary-word domain name for a number of years for purposes relating to the general meaning of that word as a financial-related term.

Honestly, for all the time and effort that silly distraction consumed, it would have been a lot simpler if my client had never run off and obtained a trademark registration in the first place.

But, the important thing to notice is that having a trademark registration is not some sort of "free pass" to win a UDRP. Certainly, there have been cases in which having a trademark registration did not result in an automatic win for the respondent. The most famous of those sorts of cases is <madonna.com> in which it was plainly obvious why someone would highly value that domain name (and was certainly obvious back in the day when Madonna was still producing new work). The domain registrant had obtained a Tunisian trademark registration because, yeah, sure, I guess he was planning on doing business in Tunisia (but, really, Tunisia at that time granted trademark registrations in 24 hours). No one believed that there was any reason for the trademark registration other than as an artifice to attempt to defend a UDRP.
 
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