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Trademarking a domain name

by rosetrees
5 replies
I know I need to consult a lawyer for this, but thought I'd ask here if anyone has any experience of this.

A client wants to work on a joint project to develop a website. We already own www(.)ourdomainname.co.uk. (edited because it was turned into a link to a site that is nothing to do with us!) Her previous web designer registered the .com, .net, .org, .org.uk and .info domains for her. These have expired - their registrar won't communicate with the previous designer (no animosity - we're all on friendly terms), so we are waiting for them to become available.

My client wants me to buy ALL these so no-one else can use ourdomainname and refuses to let me launch the domain until we have. I tried explaining to her that there are dozens of domain extensions and we could never be sure to buy them all.

Then it occurred to me that it might be better to trademark "ourdomainname". Is it possible to do this for domain names? Like "ourdomainname" it's 3 common words.

Any thoughts? Not sure if what I said is clear.

Thanks
Carol
#domain #trademarking
  • Profile picture of the author sbucciarel
    Banned
    Yes ... if you trademark THIS NAME, you own the trademark to THISNAME.COM, as long as it has not already been in use prior to your trademark or your first use of the mark.
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  • Profile picture of the author TheWealthSquad
    Don't forget that trademarking is not always a straight forward affair. Trademarks are relevant to the area they are in and not a universal mark.

    I could register Happy Thoughts for a company doing T-shirts with inspirational sayings on them. Someone else could register Happy Thoughts for an Ice cream company. Unless their is a possibility of overlap, they would both be allowed to exist.

    Companies like Google, Microsoft, Coke, Ford, etc have world wide recognition so their trademarks do tend to get treated differently.

    It doesn't hurt to trademark it but the benefit you get is probably going to be limited and they aren't free.

    PS Not a lawyer but have worked for a company that got cease and desist letters on a couple of occasions so learned more trademark law than I really wanted too.
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  • Profile picture of the author Loren Woirhaye
    I'd tell your friend to stop wring here hands about somebody
    stealing her "mindshare" and go out there and become so
    pre-eminent with her brand through marketing.

    Trademarking offers limited protection anyway.
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    • Profile picture of the author rosetrees
      @ Loren - believe me, I tried! I'm beginning to think this whole thing is going nowhere. She keeps telling me how many marketing opportunities she's missed because I haven't got all the domain names. I keep telling her the site is ready and she should get out there and promote it! Stalemate.

      @ the wealth squad. That's ok - we're not interested in trademarking in any field other than our strictly defined one.

      @sbucciarel - we're not aware that the name is being used elsewhere.

      Thanks for the answers guys. I guess a chat with a trademark lawyer is on the to do list.
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  • Profile picture of the author DogScout
    You don't need a lawyer, just go to US Patent & Trademark site.
    you can do it all on line yourself and save the lawyer fees. they step by step the whole process even to the search for previous trademarks in use.
    the process takes 1 year (about) once you've filed you can use ™ after your mark then when it is registered you'd use ®.
    I've done it twice before.

    There is always a problem. Always.
    That means you'll likely get an email from them with the problem outlined. Fix it if it is easy, if there is any question in your mind, there is a Trademark lawyer usually assigned to your application. The email should have their name and number, just call them. I have always found them to be pleasant and willing to go the extra steps to push it through. (although I am sure you could get a bad one).

    Also as a side note, you don't need to use the .com part... although I just realized, your not looking for a US mark, huh? Oops. Well, I bet the process is close to the same there. (unless the client is US).

    Good luck
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