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.

 

[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

 

[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.

 

[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.

 

[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]

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

 

[DoNotTrackMyIP]

OK to paragraphs 1&2. I think any desirable generic wording branded to a class would possibly be susceptible to RDH. Irrespective of their value. I could imagine, over time, that I could turn down $xx-xxxK for these domains, because the domains represent my business. But most things have a price of course. I probably wouldn't hesitate to accept high $xxxK today and rebrand

Maybe the cheaper thing to do then is just pay for TM monitoring. That way if someone comes along and tries to TM it you can interject in that 30day period. Or you can probably just scrape USPO daily and setup an alert yourself.
https://eog-tmng.uspto.gov/#issues=...20&orderBy=SERIAL_NR&view=review&subview=tile

This only covers US, not sure about Madrid Protocol related-monitoring.

Again, not legal advice.

 

[ThatNameGuy]

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.

Stub...i've trademarked three names that I happen to own domains for, and I go through Legal Zoom. They're not the cheapest, but like Go Daddy and IBM, they're recognized by "end user's" The process generally takes from 6-9 months assuming no hiccups and cost from $300 to $500. I don't bother with other countries for good reason. A trademark lawyer like the one who hangs out on NP will charge you $1,000 to $2,000 for what you can do for $500 or less. Good Luck!

 

[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.

 

[trelgor]

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

 

[trelgor]

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

 

[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.

 

[carob]

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.

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.

 

[frank-germany]

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

 

[frank-germany]

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

 

[frank-germany]

I think I only need 1 domain sale on each domain to prove I have/am using my trademark commercially. I don't see that as a problem. Is it?

you need to make use of the trademark
in commerce
in the way it is described in the trademark records


- I'm no lawyer- no legal advice -

 

[mr-x]

Do you have a link?

https://www.ipwatchdog.com/2020/01/...oms-trademark-enforcement-campaign/id=117725/

 

[DoNotTrackMyIP]

@stub Not a lawyer but from what I have discovered you can file your trademark with intent to use and string that along for at most three years. So you first file for the TM, about four-five months later it is opened for comment for 30 days, and then if no one complains you are granted the TM and then you file an intent to use ($150 USD each time) every 6 months or so for up to a 3 year period. Expect a lot more back and forth if you domain is not unique. However yes as a non-US citizen you HAVE to go through an attorney. Sorry I don't know of a good TM attorney (yet) and I cannot refer one to you.

This post is not to be construed as legal advice.

 

[hookbox]

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.

This is true if you don't trademark the name including .com in the name. I think you become more protected across most of the categories when you include .com in the trademark. @jberryhill would know for certain.

 

[tonyk2000]

It's not my intention to sell these domains. They are and will be my permanent domain names for transacting my business on the internet.

Initially I though you were looking for some bulk TM protection of forsale or at least undeveloped domains. However, in this case and since the intention is to prevent UDRP / RDNH, it should probably be enough to a) register a TM in a jurisdiction where the business is incorporated (or where you personally is located if not incorporated). b) Add "DBA /doing business as/ yourdomain .com" into the company incorporation documents or tax registration certificate, or maybe to any official registration(s) you have or may obtain as a natural person, if the jurisdiction you are operating from so allows.
The second part should allow to include "I am KNOWN as thisdomain .com" statement in your (potential) UDRP response, providing the proof if necessary (official docs from your country).
As per UDRP overview from WIPO:
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:
...
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights;

 

[tonyk2000]

So in my case, with 2 domains, can I add doing business as domain1 and domain2 to the incorporation documents, or possibly even develop (not yet developed) my "incorporatedname.com" which is doing business as domain1 and domain2, say on a 1 page landing page. Would that help?

Two domains - should be possible to add both as DBA, with "and", why not... if this DBA thing is acceptable in your country (not necessary by companies registration authority, it may also be taxpayer registration certificate, city or town permission to operate, or anything "official"). And, if there are 2 different websites or landing pages - you can also add a footer with "(C) Your company name", and some text like "thisdomain.com (R) is a registered trademark of <company name here>, proudly registered in <country name>". By (C) and (R) I mean "copyright" and "registered trademark" symbols (unsure how to post those in a forum). Or, if you claim unregistered trademark - remove (R) and "registered". Simly "thisdomain.com is trademark of <..>", without (R), would imply that you think it is a trademark, but not officially registered yet.

 

[.X.]

I am late to the thread, Stu i initiated a TM with Trademarkia and backed out, not only is the process costly, but tedious as hell IMO

 

[wwwweb]

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.

If you want to use the human element route, there is a really good TM lawyer who is a member here, and he has a lot of experience with domain names as an early investor in the space, his name is Mike Eddy out of San Diego, you will probably save yourself a lot of time, and money by hiring him as he knows the space really well.

 

[Corey]

Not sure you can TM a domain name. Keywords yes.

Australia's system is different, a registered business name holds the right to the domain name.

Cheers
Corey

 

[patents]

Not sure you can TM a domain name. Keywords yes.

Australia's system is different, a registered business name holds the right to the domain name.

Cheers
Corey

The domain name trademark application rejection for the mark "Booking.com" is currently under review by the U.S. Supreme Court. In Australia, the same application was approved and the mark is registered there. See it here: https://search.ipaustralia.gov.au/trademarks/search/view/1660140?q=booking.com

There are many other similar registrations, e.g. villas.com. Domain name ownership is separate issue from the trademark.

 

[Name Trader]

Long time ago, I've been told by the Czech TM office that domain name can not be trademarked.

I've seen domains which have been trademarked in my searches at USPTO. But personally, I think it might restrict the trademark use somewhat.