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.

 

[trelgor]

About the TLD in the TM. https://abovethelaw.com/2019/11/dot...ns-and-testing-the-boundaries-of-genericness/

I think, generally, courts don't give much credit to the extension. In essence they tend not to consider them. Maybe new case law is forming for nGTLD:s, I don't know. Same for UDRP:s. For figurative marks you can include the .com, sure. On the other hand, as noted above, including the extension (apparently) can make a generic term more trademarkable. (Booking.com). But that is a case of acquired distinctiveness, which has taken quite some marketing effort.

I would try to protect the left of the dot. The protection scope gets more limited with TLD details in there. Which Trademark+TLD would a court side with? Does a TLD add or retract anything in fact?

 

[Corey]

Trademark basics | USPTO @ https://www.uspto.gov/trademarks-getting-started/trademark-basics

WIPO's trademarks page is your starting point to understand, search, and register trademarks. @ https://www.wipo.int/trademarks/en/

Cheers
Corey

 

[trelgor]

About the TLD in the TM. https://abovethelaw.com/2019/11/dot...ns-and-testing-the-boundaries-of-genericness/

I think, generally, courts don't give much credit to the extension. In essence they tend not to consider them. Maybe new case law is forming for nGTLD:s, I don't know. Same for UDRP:s. For figurative marks you can include the .com, sure. On the other hand, as noted above, including the extension (apparently) can make a generic term more trademarkable. (Booking.com). But that is a case of acquired distinctiveness, which has taken quite some marketing effort.

I would try to protect the left of the dot. The protection scope gets more limited with TLD details in there. Which Trademark+TLD would a court side with? Does a TLD add or retract anything in fact?

I don’t think the Supreme Court will side with booking.com though. https://www.mediapost.com/publicati...com-trademark-would-harm-competition-eff.html

 

[Name Trader]

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;

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?

 

[Name Trader]

Check out cpaglobal.com

both cpaglobal.com and cpa.global don't resolve for me?

 

[Name Trader]

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

That's what I'm currently finding out But I haven't given up hope. Yet For me, I cannot "do it myself" as I'm not a US resident. Having to use a US Lawyer (ok the discount services also use a US lawyer by default) although I have considered a more expensive TM lawyer. I might even apply for a TM in another country, other than the US since it would have the same rights, although might be considered less legitimate.

 

[.X.]

That's what I'm currently finding out But I haven't given up hope. Yet

I would say this, If the domain is absolutely not going be sold and you are the sole proprietor of the business, it may be worth doing, If not, i wouldn't even consider doing it IMO

 

[.X.]

Concerning "reverse high jacking" you can fight this on a per diem basis, i can help with you with that if needed should run into that problem

 

[Name Trader]

I would say this, If the domain is absolutely not going be sold and you are the sole proprietor of the business, it may be worth doing, If not, i wouldn't even consider doing it IMO

I'm probably not going to sell these domains. They are for my own business. They'll be off-the-market. Of course with a silly offer, I might sell them the domain and the TM, and move to another domain and register a new TM

 

[.X.]

I'm probably not going to sell these domains. They are for my own business. They'll be off-the-market. Of course with a silly offer, I might sell them the domain and the TM, and move to another domain and register a new TM

I think with what you said, you should purse the trade mark, you sound very serious about this business and people will try and clown with you and your traffic+

 

[Name Trader]

Concerning "reverse high jacking" you can fight this on a per diem basis, i can help with you with that if needed should run into that problem

I understand that. But it's likely to be more troublesome without a prior TM already in place. Which is why I want to TM in the first place. I don't want to go thru a UDRP case and every time prove my case. I want to show them an existing TM, case (almost) over

 

[.X.]

I understand that. But it's likely to be more troublesome without a prior TM already in place. Which is why I want to TM in the first place. I don't want to go thru a UDRP case and every time prove my case. I want to show them an existing TM, case (almost) over

I agree Stu, 5K+ possibly per UDRP is an astronomical fee as opposed to paying the trade mark fees, and like you say, you will have the bird in the hand ready should you need to take action

 

[Name Trader]

Obvious I consider my potential TM's valuable and desirable to potential others. I don't find that many trademarks in place for selling domain names. So I get to be a pioneer. And may need to defend them against interlopers using the URDP process to RDNH my domains.

 

[Shackleton]

I also backed out of the process with Trademarkia after they tried to up sell me.

 

[Name Trader]

I also backed out of the process with Trademarkia after they tried to up sell me.

What did the price go from to what? Or how did they try to up sell you?

 

[Shackleton]

The initial cost was under $500. Sorry, not sure of the exact amount. The up sell was $479 as I wasn't using the mark in commerce at the time of the application in the class I wanted it for.

 

[eurorealtor]

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

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.

 

[patents]

The initial cost was under $500. Sorry, not sure of the exact amount. The up sell was $479 as I wasn't using the mark in commerce at the time of the application in the class I wanted it for.

What was the $479 bill for? The filing of a statement of use?

 

[Corey]

@patents

Owner
Booking.com B.V.

 

[patents]

@patents

Owner
Booking.com B.V.

I'm not an expert on Australian trademark law but the IP Australia site at ipaustralia.gov.a has some nice information on who can qualify to own trademark rights as well as how domain names relate to trademarks:

To be eligible the owner must be:
an individual;
a company;
an incorporated association; or
more than one of these (in the case of multiple owners).
https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/trade-mark-eligibility

Some basic information can be found here:
https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/trade-mark-basics