Trademark vs. Registering all ext.

[Brokering.TV]

I own a name for which I am considering receiving a TM on. Currently, there is no TM for the name. However, the name is owned by others in differrent extensions. If others own it in different extensions, can I TM the word still??
Also, if the others were not purchased, is it cheaper to TM than to buy, .com, .net, .info, org. and registering them every year??

 

[exponent]

Even if you order all the domains, you really aren't protecting yourself from trademark infringement. For example, if I registered Pepsi.com, .net, .org, and so on, Pepsi could still recover the names.

 

[DNQuest.com]

First, TMs are acquired through commercial usage. There is no magic paper that says, poof, I have a TM. If you are saying you are looking to register your mark, again, you need to prove you are using the mark commercially and have gain secondary meaning in the marketplace.

With that said. If you do obtain TM status, domians registered before the status occurs were not registered in bad faith. Why, because the TM was not around. So going after them will be tough. Now, if they start putting up ads the compete against you after obtained TM status, you could go after them for bad faith usage. UDRP is written "Registered AND used in bad faith". So if the TM was not in exsistance, then you can't prove bad faith. On the flip side, that line is seems to be interpreted as "Registered AND/OR used in bad faith". So even though the domain is registered before TM status is acquired, once they start using the domain in bad faith, they could open themselves up for a challenge.

 

[AdoptableDomains]

Domains and TM use is really still the wild west. Anything can happen in front of the right judge and jury depending on their interpretation of the law. As for UDRP or WIPO, DNQuest is correct. If they registered before you establish TM they may have cause to keep it. On the other hand you may still be able to keep them from using it against whatever category of goods you TM is for. In other words, you couldn't take it, but might be able to see they cant use it in an infringing manner.

However, TM laws are not limited to UDRP and WIPO. You can sue in a regular court and go way beyond the limitations in a UDRP case. It could also be prohibitive to even defend in court if you are in different countries.

If you seriously intend to develop, it's cheaper to buy and hold the other TLD's than try to enforce by TM law later.