legal Trademark registration questions & concerns

[DomainEmpire.com]

Hi all,
I'm in the domain business since 19 years now but I've never thought to register a trademark so far.
I've recently discovered to own a nice typo (typo of a generic dictionary word) actually getting a growing flow or organic traffic so I'd like to trademark the whole domain (wordname.com) before starting to develop it, obviously withoit violating in any way the holder of the trademark on the generic word (let's suppose I own gealth.com which's getting indirect organic traffic from people looking for health.com just to explain in full the concept).

1. From where should I start to register an US trademark over 'Gealth.com' ?
2. How does the whole process work ? Should I wait for a registration approval considering I want to opt for the 'health' category ?
3. What will I be asked at the time of the registration submission ? Should I tell more about the use I wish to do of Gealth.com ?
4. Let's suppose the trademark will get approved and that I'll never use in violation of the main Health.com trademark/activity (I'll never join them as an affiliate and I'll get sure to develop a slightly diff. activity), will the Health.com owner be able to sue me for some reason in the future ?

Any advise would be highly appreciated, thanks in advance.

 

[Castion]

@[email protected] manages our TMs. I will buzz him to chime in

 

[chipmeade]

If even you are determining you are getting traffic intended for health.com, that is a classic case of typosquatting, regardless of tm issue.

 

[[email protected]]

Domain names are not trademarks. A trademark is defined as a word, phrase and / or a design specifically associated with goods and / or services. Generic words cannot be trademarks for that which they describe. For instance the word APPLE cannot be trademarked in association with an apple store but can be trademarked in association with the sale of computers.

You are trying to protect the word gealth and have found that it gets traffic from people looking for health services. We generally advise our clients to have us do a screening search prior to filing the trademark application to determine if others have registered or applied for a mark on the federal register or used one at common law that is the same or similar to yours for the same or similar products / services. This prevents you from losing all costs associated with filing an application for the mark because someone already has the same or similar mark in the same channels of trade as you.

We can do the search and send you a reporting letter outlining any obstacles we see that might prevent registration of the proposed mark and 15 minutes of attorney time for discussing the results for the following costs:
$435 (WORD mark in one "channel of trade" or class);
$500 (DESIGN mark in one "channel of trade" or class);
$675 (COMBINED WORD & DESIGN mark in one "channel of trade" or class).

Once the search is complete then we can advise you whether it is reasonable to file a trademark application.

Please let me know if you have any other questions.

Thanks

Stevan Lieberman | Member | Greenberg & Lieberman, LLC
1775 Eye St NW, Suite 1150, Wash, DC 20006
ph: 202-625-7000, direct: 202-625-7016, fx: 202-625-7001, cell: 202-270-4802
Skype: stevanlieberman, WhatsApp: 2022704802, gchat: stevanliebermanesq,

http://www.APLegal.com, http://Escrow.Domains,
http://www.WilyFish.com (or http://WF.ICU ), http://DomainTheft.com
Patents Trademarks Copyrights Internet Media Prosecution Litigation Representation

 

[DomainEmpire.com]

Stevan, thanks for the clear and professional advice.
Yes, it's not worth a trademark registration in our case, it would be useless unless we should decide to register it uder a diff. off topic category so we'll first think a bit over the best use to do of our domain before making a decision and asking for a deeper private advice to you.
Basically we can't use 'gealth.com' for any health related service without violating the health.com rights, I got you.

 

[[email protected]]

I disagree. Health.com has no exclusive rights to use the term health in association with health. You are free to use the health traffic in association with health.

 

[DomainEmpire.com]

Ok, we'll reconsider the whole situation before moving forward.
I've appreciated a lot your time and advice, I'll let you know if/when we'll be ready to move forward.