Trademarking Reviews?

[Name Trader]

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.

 

[Steven McEvoy]

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.

 

[Name Trader]

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.

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?

 

[Steven McEvoy]

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?

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.

 

[tonyk2000]

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.

 

[Name Trader]

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.

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

 

[Name Trader]

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.

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.

 

[Steven McEvoy]

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

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?

 

[Name Trader]

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?

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.

 

[tonyk2000]

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.

 

[BaileyUK]

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.

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

 

[Name Trader]

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

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

 

[trelgor]

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.

 

[trelgor]

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

 

[trelgor]

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

 

[Name Trader]

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

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

 

[trelgor]

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

 

[Name Trader]

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

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?

 

[trelgor]

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?

 

[carob]

The 2 domains are retailing domain names. So I would not want to lose the domains or put at risk the development costs.

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.