TMing a domain name. How?

[companyone]

Hi,

If I wanted to TM a domain name, how long and how much does it cost?

Thanks in advance for your replys.


Dan

 

[Steen]

Where are you?

Where do you want to TM a domain name?

 

[companyone]

Hi Steen,

I am in Calif. I want to TM a name in the US.


Thanks,
Dan

 

[GiantDomains]

You can't just TM a domain, you have to prove that you are using it for business. It can take over a year for the whole process. You can hire a laywer, or do it yourself.

 

[jberryhill]

"If I wanted to TM a domain name, how long and how much does it cost?"

Standard response #345:

I'm going to assume that you are referring to obtaining federal registration of a trademark in the US. The thing is, and what seems to be missed whenever the question is asked, the United States Patent and Trademark Office does not hand out "trademarks". What they do is to *register* trademarks. It is a registration system for something that already exists.

You obtain trademark rights by using a term in commerce in connection with goods or services in such a way that the term acts as a distinctive indicator of the source or origin of the goods (or as an inidcator of a particular quality of goods or services, even if the "source" is not known to the consumer).

Read that a few times. What it says is that you get trademark rights *automatically* by using a trademark.

Now, once you have a trademark, you might consider filing for federal registration of that trademark, in order to obtain a number of benefits and presumptions that go along with federal trademark registration.

One minor wrinkle is that you may file for federal registration on the basis of a bona fide intention to use a trademark, but even if the application is allowed, you do not obtain registration unless and until you begin use of the mark in commerce in connection with the identified goods and services.

Another wrinkle is that your ability to obtain registration, asssuming you are using the domain name as a trademark (and more than simply as an address), depends on what the domain name is. For example, you are not going to obtain federal registration of "turkeys.com" if your business consists of the sale of turkeys.

Filing an application for federal trademark registration costs a couple of hundred dollars. Depending on what the proposed mark is, and whether a third party decides to oppose your registration, the process may take anywhere from about 12 to 18 months, up to several years.

 

[dtobias]

On the other hand, it appears that register.com has succeeded in getting federal trademark registrations for "register" and "register.com" despite it being a generic term for the service of domain registrations which this company provides; and they've used the trademarks to prevail in a recent UDRP case:

http://www.arbforum.com/domains/decisions/208576.htm

The panelist in question didn't seem to see the irony of the fact that the word "register" was being upheld as a trademark while simultaneously being used in its generic sense many times in the course of the arguments and decision of the case (which inevitably needed to discuss the registration of domain names and trademarks).

 

[actnow]

John, you have mentioned in the past that the name has to be
distinctive.

ActNow Turkeys
Swift Turkeys
Tyson Turkeys
Gourmet Turkeys ?
Organic Turkeys ?

What happens if and when you get a TM on GourmetTurkeys.com.
And, someone else registers Gourmet Turkeys.net, org or info?

Can they offer Gourmet Turkeys?

 

[actnow]

dtobias, you posted the above message as I was typing mine.

And, my posting is basically asking what was answered by your
posting.

However, I disagree (as if it really matters) that Register.com has
exclusive rights to the term - register.

Does General Motors has exclusive rights to "general" or "motors"?

Eventhough, the respondant was unethically copying Register.com site. What gives Register.com the exclusive right
to the term Register?

I would speculate that almost everyone on this forum probably has
a domain that contains the word - register.

 

[jberryhill]

"On the other hand, it appears that register.com has succeeded in getting federal trademark registrations for "register" and "register.com" despite it being a generic term for the service of domain registrations"

Yah, but look at the goods and services for which they obtained TM registration - "register" is not generic for "email services".

The definition of "generic", as that term is used in trademark law, is much, much narrower than the kinds of things that are blithely deemed "generic" in these discussions, but I'm not up to re-hashing that whole discussion.

"What happens if and when you get a TM on GourmetTurkeys.com"

If you "get a TM" on X, then you have a TM on X. I don't understand the question.

The dividing line between generic and descriptive is very critical, because descriptive terms may be considered to be trademarks upon a showing that the term has acquired secondary meaning as a trademark - through such evidence as longtime use, advertising expenditures, consumer surveys, etc. Is that entire subject likely relevant to someone who has just registered a domain name, and now wants to know how to "TM a domain name"? Probably not.

Does one single-member NAF case prove much? Also probably not. UDRP cases in general are lousy reference materials to learn about trademark law. In the register.com case, for example, attacking the legitimacy of a federal registration, rather than moving much of the same argument into the legitimate rights / bad faith sections, is usually a tactical error.

 

[hiOsilver]

If you have the funds and want the expertise, then you should consider hiring a TM attorney. If not, or just so that you know if you want to hire an attorney or do it yourself, I recommend the Nolo Press book on doing your own TM. It is a must read, in my opinion, for anyone involved in domains, just so that you understand the kind of issues that John Berryhill has raised in his post. go to www.nolo.com

I hold federal registration on hiOsilver (as a beverage). I registered it myself, with some paid assistance from an attorney when it looked like I might have some opposition. The process is even easier now, since the PTO has put the appliation online.

 

[companyone]

Hi,

Thanks for your replys. Very good information. I think I will for go a tM right now, but I will save the information provided for future referance.

Dan

 

[websitedeveloper]

good information above! However i would like to register a TM for software, can you guys please recommend a person who can assist me and evaluate whether it's worth it or not? (we've spent several months developing the software and I've invested about $3,000 in it as well - perhaps for those reasons alone it's worth it? - the software hasn't been released yet)

How much would the whole process cost?
We're not a business (just students) would that make a difference? (and we're not American - does that matter?)

Thanks in advance..

 

[TopNames.com]

I incorporated (LLC) and filed a trademark on MentorLabs.

I used the following sites which handeled all aspects without any problems and they both were great with communication and updates.

Trademark - http://www.allmarktrademark.com/
LLC - http://www.bizfilings.com/

 

[actnow]

MentorLabs - Ken,

I understand using the cookie cutter services.
And, I have used some of those services in the past.

However, in this industry, you can accidently step on a major
corporation. And, they will go after you with "both barrels".

Therefore, It is in your best interest to be protected before you
are attacked. And, that is why I will only use a lawyer for
legal matters.

Ken and Howard, you guys are very smart. But, I don't want
you to read my "EKG". Eventhough, you can read a book or have
software to do it for you.

Legal fees only cost you pennies compared to dollars of legal exposure.

 

[TopNames.com]

"Therefore, It is in your best interest to be protected before you
are attacked. And, that is why I will only use a lawyer for
legal matters."

The individual who did my trademark is an attorney. I wanted Ari or John to do it, but Ari was too busy and John and I had a conflict of interest on another domain. I consider John and Ari the two best attorneys in the domain game.

 

[pam]

I did an online search and found an attorney who does trademark registrations for a living. I checked him out and he was highly recommended. I paid him the registration fee plus $250 to file everything, and he's kept me up to date on each filing.

I had to send in copies of my website (adult) with the forms but it was a very painless process.