Trademarking a Domain Name?

[BlackDiamond]

I begin by stating that I am not a domain name professional, and I have absolutely zero interest in either forming a business organization or selling domain names. However, I do have a few domain names registered that at this time do not conflict with existing trademarks.

Let's suppose a company or entity with deep pockets, through convergent evolution, settles on a name that I have already registered. Suppose I then get a cease-and-desist letter from an organization (I have not, this is purely hypothetical) to turn over my domain name.

Although the law would be on my side if I were to fight it, the truth is I don't have much money and would quickly run out in a legal dispute. Should I contact a lawyer to help me trademark a domain name as preventive maintenance or would that be a needless step that would cost me money for no relevant benefit? I understand that any advice given here is "at your own risk," but given that I am unsure what my options are, I am willing to risk accepting bad advice than none at all.

 

[Mike]

Via Google: The Ninth Circuit U.S. Court of Appeals recently ruled that a business must use its domain name to sell goods or services in order to protect the name — even if a competitor starts to use the name after you registered the domain. In other words, merely reserving a domain name isn't enough.
This would mean to me that just Trademarking a name to protect the name from a company that may have distinct use for the name through association with the sale of good, products, etc. is not going to be sufficient.
In other words, if you don't have a product, intellectual service or other compelling reason to have your domain(s) protected, it would be a waste of money.
Now, this may just be the "bad advice" that you asked for , i'm hoping that DNQuest, Labrocca and eventually JBerryhill (resident law guru - a.k.a attorney) will weigh in on your question...

IB

 

[BlackDiamond]

Well, that seems like good advice to me, so thanks for answering my question. Of course, I await other replies. I don't want to have to spend money if I don't have to!

 

[DNQuest.com]

For clarification, you cannot fill out some paperwork, pay some money and say you have a TM. A TM is earned through usage of the name. For the most part, domain names themselves cannot be TMed, usually, it is the name of a company, product or service that is TMed and apply that to domain names (the TM holder would have right to the domain, though not exclusively).

So in this situation, just registering a domain will not give you TM protection, you must actively be using the domain in commerce. Additionally, you would not want to TM a domain name because that would only cover the name with the particular extension. So if you TM the .com, it would not cover the .net.

Being new to the business, I strongly suggest read my sig and watch the Berryhill video, it will help you immensly.