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.

 

[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?

 

[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.

 

[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?

 

[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.

 

[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?

 

[Name Trader]

@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?

 

[Name Trader]

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

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

 

[frank-germany]

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

the complaint was coming trough the registration office of course

when you use trademarkia they act as your representative

 

[Name Trader]

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

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?

 

[Name Trader]

the complaint was coming trough the registration office of course

when you use trademarkia they act as your representative

Ah.. OK

 

[mr-x]

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?

Interesting read, Backcountry.com trying to have other trademarks cancelled, suing small businesses using the backcountry in combination.

I thought this would be a week TM. Article says public opinion / backlash was significant and they stopped.

 

[Name Trader]

Interesting read, Backcountry.com trying to have other trademarks cancelled, suing small businesses using the backcountry in combination.

I thought this would be a week TM. Article says public opinion / backlash was significant and they stopped.

Do you have a link?

 

[Name Trader]

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

This looks like something proposed by their lawyers, which probably sounded good at the time. Until the backlash. But it's true that my position with generic-like TM proposals, might put me at both ends of the spectrum. Like BackCountry, I might be in a position to go after other people trademarks, although I don't see any relevant TM's in my TESS Basic Text Search. Or I could be spotted by a Big Fish, who decided they wanted to go after my TM's because of their generic nature.

But my main reason for seeking these TM's is primarily to set the groundwork for defending a UDRP from my domains being snatched from me. It's basically about protecting my domains from Reverse Domain Hijacking, not at all about the TM's.

 

[mr-x]

This looks like something proposed by their lawyers, which probably sounded good at the time. Until the backlash. But it's true that my position with generic-like TM proposals, might put me at both ends of the spectrum. Like BackCountry, I might be in a position to go after other people trademarks, although I don't see any relevant TM's in my TESS Basic Text Search. Or I could be spotted by a Big Fish, who decided they wanted to go after my TM's because of their generic nature.

I think backcountry.com is an interesting outlier. Easy to get caught up in obscure details; I'd rather have a TM than not.

 

[DoNotTrackMyIP]

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?

If your horizon is to sell the domain in 3 years you technically don't have to do anything at all IF you file first with "intent to use" and string it along. If you have a longer horizon sell T-shirts off the domain with a TM'ed name or logo.

PS I think for you TM can be $2-3k USD easy, more if there's back and forth with the USPO, plus the $150 USD every 6 months. Just be prepared to litigate I guess. Does anyone know if Rick Schwartz cool with helping with these sorts of URDP (URDP?) actions? He seems hellbent against this activity.

 

[Name Trader]

If your horizon is to sell the domain in 3 years you technically don't have to do anything at all IF you file first with "intent to use" and string it along. If you have a longer horizon sell T-shirts off the domain with a TM'ed name or logo.

PS I think for you TM can be $2-3k USD easy, more if there's back and forth with the USPO, plus the $150 USD every 6 months. Just be prepared to litigate I guess. Does anyone know if Rick Schwartz cool with helping with these sorts of URDP (URDP?) actions? He seems hellbent against this activity.

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.

 

[DoNotTrackMyIP]

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.

Oh let me retract my earlier comment, selling T-Shirts won't work because they'll be in a different class of what you're going to TM (unless you really do plan to sell T-Shirts).

If this is a permanent business, you have to pick the class and do business in that class, and then send logos and samples to USPO for examination. Still won't change the fact that this could cost you mid to high $x,xxx to do it right, especially if you have multiple classes.

How "sure" are you that you're vulnerable to UDRP? Are these $xx,xxxx-$xxx,xxx domains?

 

[Name Trader]

Oh let me retract my earlier comment, selling T-Shirts won't work because they'll be in a different class of what you're going to TM (unless you really do plan to sell T-Shirts).

If this is a permanent business, you have to pick the class and do business in that class, and then send logos and samples to USPO for examination. Still won't change the fact that this could cost you mid to high $x,xxx to do it right, especially if you have multiple classes.

How "sure" are you that you're vulnerable to UDRP? Are these $xx,xxxx-$xxx,xxx domains?

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

 

[trelgor]

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