Does anyone know about trademarks?

Question

I just read "Simply registering a domain name does not protect you if another company files a trademark infringement claim — if they hold a legal trademark, you can lose your domain name and even find yourself liable for the owner's legal costs"

http://www.allbusiness.com/technology/internet-domain-names/695-1.html

Does this mean I have to trademark a website name, otherwise someone could steal domain? And if yes what is the best and cheapest way?

Answer 1

I ain't a lawyer. Just one who studies these things based on my previous work in the domain registration business.

What that phrase meant is there's a chance the domain name you want to register might happen to infringe an existing trademark. You might want to register trendmicrosoftest dot com to eventually sell trendy and very soft pillows, but the domain name contains terms belonging to 2 trademarks (Trend Micro and Microsoft).

One reality about trademark holders is they have to protect their trademark rights for their respective terms and uses or risk losing them. To that end, some employ various means to scour the 'net and see if there's a domain name that's potentially infringing their trademark right.

If they find yours, they might decide to send you a Cease and Desist (C&D) letter demanding you hand it over or else. Some are legit, others aren't.

Trademarks initially arise from use in commerce. By eventually establishing your trademark rights to the term for its specific use (e.g. trendmicrosoftest pillows to sell trendy soft pillows), you are potentially STRENGTHENING your "claim" and preventing others from possibly getting a free ride on it.

If you're US-based, you can file an "intent to use" trademark application at uspto.gov. It'll cost at least $300+, not inclusive of attorney's fees should you retain one to handle it for you.

In essence, establishing a trademark provides you an additional layer of "protection" and possible redress should someone try to "steal" your domain name. It's not a bad idea to demonstrate one, especially if it's for a long-term business.

Two caveats:

1. A domain name can still be "stolen" via technical means (e.g. compromising your login details) even if you have a trademark. A trademark only aims to protect the general public or your market from possibly confusing it with someone else.

2. A trademark is established only for a specific use. It doesn't give you carte blanche over any and all uses of it even if it's unrelated to your specific use.

Getting a trademark might be sensible if you intend to use it for a long-term business. It doesn't completely shield you, but it does give you benefits not ordinarily bestowed on those who don't have any.

Answer 2

You don't have to trademark the domain name, though it may be in your best interest.

First use or common-law rights do give you some protection. But registering for a trademark does provide you with several benefits. Here's what the USPTO has to say:

"You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
•constructive notice to the public of the registrant's claim of ownership of the mark;
•a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
•the ability to bring an action concerning the mark in federal court;
•the use of the U.S registration as a basis to obtain registration in foreign countries; and
•the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods."
Hope that helps! I wish you much success & happiness in all your ventures!

Answer 3

My over-hyperactivity. You couldn't guess by looking at me sitting in front of the computer and being pretty much totally inactive, but with the trademark, you'd know.