NamesCon2020

Trademarking Reviews?

Located in Legal Discussion started by stub, Jan 12, 2020.

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  1. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    I'm considering trademarking 2 of my domains to give me some protection at least from Reverse Domain Hijacking. Which seems to be on the rise with changing attitudes in the UDRP process. When I look at all the online trademarking companies, they all look like some kind of setup for selling setup legal advice, and a tad pushy in their insistence on not completing an application without this consultation. Which I can understand. Now I'm not saying the legal advice is not needed. But if I know what was going to be asked, I could better prepare my answers. I'm sure there are people here have used these companies. I would like to hear their opinions, recommendations, and any other general advice you may have.

    The 2 domains are retailing domain names. So I would not want to lose the domains or put at risk the development costs.
     
    Last edited: Jan 12, 2020
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  2. Steven McEvoy

    Steven McEvoy CommGiant.com eCommerce community VIP

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    Not worth it, when you trademark something doesn't mean you have the full rights to that "domain" for everything. Trademarks are done via classes.
     
  3. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Yep. But if I have a legitimate interest in the class, doesn't that protect me from somebody with a trademark in another class taking the domain?
     
  4. Steven McEvoy

    Steven McEvoy CommGiant.com eCommerce community VIP

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    No it all depends on what the class you trademark it under and what the other company is using it for, and if they already have a trademark, its very unlikely USPTO will allow you to trademark "word" if someone already has something very similar.
     
  5. tonyk2000

    tonyk2000 Top Member VIP ★★★★★★★★★★

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    At least for UDRP purposes, trademarks can be taken into account regardless of the country of registration. So you might want to check different countries - all have different requirements, prices etc. It would also be reasonable to think about establishing some sort of connection with the country or region you selected - postal address, or IP (intellectual property) holding company (no bank account and no "trading") - should be cheap enough to setup and maintain, etc.
     
  6. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Exactly. So if I receive the trademark, I should be protected, No? This might be where the legal advice might be helpful. Yes/No?
     
  7. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Thanks for the advice about other countries. I will look into that. But a US TM might be one of the best. It might also deter others from using the UDRP process to Reverse Domain Hijacking the domain, in the first place.
     
    Last edited: Jan 12, 2020
  8. Steven McEvoy

    Steven McEvoy CommGiant.com eCommerce community VIP

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    A little confused here

    Okay lets start from the beginning, so what im gathering is you have 2 domains, word1.com and word2.com that you are currently selling and you want to register a trademark for "word1" and "word2" so someone who starts a business with word1 and word2 you want them to be forced to buy your name instead of UDRP process, correct?
     
  9. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Nope. I'm using the 2 domains in a legitimate business of selling domain names in a retail environment. Because they are exact match domains, they would have value to somebody else selling domains, or other categories with branding potential.
     
    Last edited: Jan 12, 2020
  10. tonyk2000

    tonyk2000 Top Member VIP ★★★★★★★★★★

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    I wanted to do the same once (not ended up with anything though), but, at that time (a few years ago) I found African (!) trademarks to be the most easy to obtain and cost effective. Also, there were options for an IP holding company in this exact region.
     
  11. BaileyUK

    BaileyUK Top Member VIP

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    Watch out that you don't fall foul of these domains being a 'Descriptive' within the class/classes your proposing. If so It's unlikely they would pass
     
  12. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Thanks. But wouldn't the Trademark Lawyer of the TM registration company be checking this before submission. Or have I missed you point?
     
  13. trelgor

    trelgor Established Member

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    The application forms are self explanatory and IP-offices (in your case USPTO) have an abundance of info. Call them if you get stuck. Goes without saying that there are shady service providers in this field. Just make sure that the term applied for is not taken in your preferred classes and that it is not outright generic for the same.
     
  14. trelgor

    trelgor Established Member

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    The USPTO will review further. Remember also that you can not add classes later on, so take a good look on that.
     
  15. trelgor

    trelgor Established Member

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    TM Lawyers can be more useful when you need to enforce or defend. TM registration providers are mostly just tapping $ off ignorance.
     
  16. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Thanks. I'll look into doing it myself. I didn't know that was possible.
     
  17. trelgor

    trelgor Established Member

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    LMK if you have questions. I’m currently studying the field.
     
  18. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    I'm not domiciled in US. So it looks like I have to go thru an attorney. Can you or anyone name the 5 biggest Online TM Filers?
     
  19. trelgor

    trelgor Established Member

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    Ah. File at your office of origin to quickly get a filing date and use that as priority date for a US TM application. I’m not that knowledgeable about such providers. Thing is in the US you need to file statement of use to keep it active, and they have a different class system. Where are you located?
     
  20. carob

    carob Top Member VIP ★★★★★★★★★★

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    If you are actively using them for commerce do you not think that is sufficient protection? In other words, establishes legitimate rights to the name.

    Does someone have an existing TM in another class of goods that predates your registration? That might I guess tempt them to roll the dice for $1500 on a UDRP hijack.

    You wouldn't exactly lose development costs as you could then run the sites on different domains - have you registered backup ones just in case? But you would lose links, branding, traffic, SEO etc.
     
  21. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    @carob

    I think I have established rights by use of the .com domain for between 1-2 years, which has zero results in TESS Basic Word Search.

    The other domain is newer, is a NGTLD, which I have only just put up the website this month. Searching TESS Basic Word Search finds 6 live results, 3 were for drawing and 3 were for words. None of which are remotely near to the trading in domain names or related services. The words are generic on both sides of the dot. My TM would be the two words combined into a phrase.

    My thinking is that having a Federal TM would be more formal and I wouldn't need to prove my rights every time. And it would have a determined start date. No proof needed.

    Should I include my logos into the trademarks?
     
    Last edited: Jan 12, 2020
  22. carob

    carob Top Member VIP ★★★★★★★★★★

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    UDRP procedures for NGTLD are different so you'd want to to check them, and supposedly they are less favourable to the registrant.

    Also for .com the UDRP as I recall is only the part before the dot. Whether that is the case with an NGTLD is the case I do not know, that needs checking.
     
  23. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    I have used trademarkia a while ago

    after a few weeks I had an reply from a 3rd party that was claiming a ridiculous complaint
    trademarkia asked me to send them another $600 USD or so in order to reply

    it can get costly - I didn't preceed
     
  24. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    when you register a trademark
    please have in mind that you lose
    it after like 5 years ( in germany )
    in case you don't use your trademark commercially
     
  25. stub

    stub Top Member PRO VIP ★★★★★★★★★★

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    Ouch! Why would a 3rd Party be contacting Trademarkia instead of you? Was it about your application or a supposed Trademark Infringement?
     

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