Domains & trademarks - another angle?

[dfvdan]

Hi all!

Let's say I register a domain which is quite generic and indicative of my business and or products. There is no other domain registered similar to the one in question and/or all variations are registered by me. No trademark is filed by me for the domain name.

Hypothetically, if then at a later date someone else registers a trademark or company using "my" domain name or a similar name, am my ownership of my domain at risk? Or am I in the right since I registered my domain name prior to the other party starting using the term/name?

Or, to rephrase the question: when setting up a site and registering a domain, should I / must I register the term/name as a trademark as well?

I would be very thankful for your opinions, and do realize that I should get legal council (am about to). BTW, I have no problems at the moment, I just want to make sure I'm safe. :-)

Thanks in advance for any help!
Cheers,
Daniel

[Bluecat]

Hi Daniel,

I'm pretty much in the same situation as you are. I registered the domain I intend to use for my business the other day, but have only put up a under construction page at this time.

My guess is that if you are trading under that domain, or if you registered with the appropriate government agency... even as a 'trading as' business you should be alright. I think that you can put a TM next your logo and sitename and that also effectively registers those as trademarks. If a dispute occurs, a trademark I believe belongs to the first user, or the company with the more money to spend on lawyers. ;)

I'm a few months from returning home, so I cant start the business yet. I'm thinking of getting my family (back home) to register the business name before I start forward marketing. I'll then transfer it into my name when I get back. There's extra fees but that might be the price I have to pay. (They're not much in any case.)

I forgot to add. I think trademarks are only valid in the country where they are registers, or the business resides. So someone in another country can register your trademark, but only for that country. Since you have the domain though, and you are conducting business under that domain, you may be safe from cybersquatting accusations. IANAL, you'd have to check this with your friendly IP attorney.

[arcadetown]

If you have established prior use it's yours. If it's a weak general term then a trademark may not even be possible. If you're really concerned why not get one. We've filed for a trademark, gamehouse and popcap have filed trademarks including all of their games (probably for just this point), but a lot of indies here don't. Some say you can claim trademark with a "tm" next to your logo to make it more official and add more legal power. Basically it all boils down to possible court expense. A filed trademark is much easier and less expensive to enforce. An unfiled trademark is potentially very expensive to enforce and the guy with deeper pockets could easily win.

[dfvdan]

Thanks for the replies this far!

As for why I'm not simply getting a trademark myself, well there are a few reasons why I may chose not to:
- It's expensive, and there's no guarantee that I get the trademark registered - the term/name may be too generic
- I'm not sure where to register it (I live in Sweden). Would registering a Swedish trademark help, or would I have to register it in the US (as well) along with other regions? If so, that would be too expensive.

So, if I could hope for something, it would be that my use of the domain name in a legitimate way would establish my right to it, even if an honest or dishonest company pops up to claim right to my domain.

I'm just not sure I can be reasonably safe without a proper trademark. Hence my worry. :)

Cheers!

[Bluecat]

I'm not sure, but I would expect that Sweden would be a member of any international agreements made regarding trademarks. I know the Berne Convention covers copyrights, are trademarks and other forms of IP covered by it? Might be worth checking out.

Honestly, if you are so concerned about the issue, you would be best served by talking to a lawyer about it. I don't think there are too many lawyers on this forum. If there were they probably wouldn't admit it... Cliffski would never talk to them again! :p

[Bluecat]

Hey Dvfdan (I don't know why, but I always read your handle as dvdfan!)

I was doing some research on the trademark issue and I discovered there is an international treaty regarding trademarks and other IP. It's called the Madrid Protocol. (Sounds like the title of a spy thriller.) The link follows.


Madrid Protocol (http://www.wipo.int/madrid/en/)

[SonSon]

I think that registering every name/logo of every games you create can be very very expensive. Especially because you'll get *full protection* only by registering in every country in every classes of products.

Generally when a name/logo is registered the owner puts an ® near it right?
For an example follow that link: http://thesims.ea.com/index_flash.php
7 names/logos are dispalyed at the bottom of that page. None of them are registered. Yet they're are well-known.

I may be wrong but if think registering everything is a total waste of money/time. Even big companies don't do that. Nintendo didn't register Zelda nor Metroid.

[James Gwertzman]

Of course Nintendo registered trademarks for Zelda and Mario... Most big companies DO register trademarks for all valuable IP.

Zelda:
http://tess2.uspto.gov/bin/showfield?f=doc&state=a48eqf.2.14
http://tess2.uspto.gov/bin/showfield?f=doc&state=a48eqf.4.16
http://tess2.uspto.gov/bin/showfield?f=doc&state=a48eqf.6.21
etc, etc

Mario:
http://tess2.uspto.gov/bin/showfield?f=doc&state=a48eqf.9.12
http://tess2.uspto.gov/bin/showfield?f=doc&state=a48eqf.10.13
etc, etc

[dfvdan]

Again, thanks for the replies! :)

As my wife happens to work with trademarks at a trademark/patent firm (don't hold it agains us :-) ), she asked some of the lawyers at the firm. Basically I got good and bad news. :)

Good: Even without a trademark, If you use a domain in a legitimate way, and document that use, you will most likely retain the right to the domain and trademark if you are challenged at a later date. Disputes are usually only won by the party complaining if the domain is used in bad faith and/or the complaining party can establish prior right to it.

Bad: My domain is quite generic, so much so that the lawyers doubted that it would be accepted as a trademark. So even if I tried to register it, it might only be money (approx. $200) down the drain.

I think I will wait, and use the TM mark on the web, and document my use of the domain. If/when things take off, I might use some of the profit to trademark the domain and/or titles.

Cheers,
Daniel

[SonSon]

Of course Nintendo registered trademarks for Zelda and Mario... Most big companies DO register trademarks for all valuable IP.

Oh sorry. Thanks for pointing that out. I should have searched much more seriously berfore posting on the subject. I really thought those names weren't registered because one could only read TM and not ®.

[Bluecat]

Again, thanks for the replies! :)

Bad: My domain is quite generic, so much so that the lawyers doubted that it would be accepted as a trademark. So even if I tried to register it, it might only be money (approx. $200) down the drain.


The good thing about this is that 'the other guys' may not be able to get a trademark for it either if it is so generic. So you may be pretty safe on all counts.