Got a great name for your site? You may want to read this...

Hi All:

Not sure if you know this, but you can search trademarks for free
on the US Government's site:

http://tess2.uspto.gov/bin/gate.exe?f=tess&state=squtmc.1.1

This may prevent a nasty cease and desist letter if you accidentally name your site or brand with someone else's trademark.

HTH,

Mook

 

Thank you ! I am sure many visitors to the forum will find this information very valuable.

Thank you, again

 

This search session has expired. Please start a search session again by clicking on the TRADEMARK icon, if you wish to continue.

Here is the link it sends us to: http://www.uspto.gov/main/trademarks.htm

 

It's a good resource to include in your search, but you don't need to register a trademark in the US, you just need to be the first person to use it, for that particular classification. A good trademark search runs a few hundred dollars as they need to check phone records, business licenses, fictitious business name filings etc - and those searches still aren't 100%. Also include google in your search - because if a mom and pop are operating a little business out of their house - it can still be trademark infringement if you use the same name for the same classification. Similar spellings, phonetic spellings, foreign spellings, etc can still be trademark infringement. You also can't just add words to a name to get around infringement i.e. "microsoft-best-resources.net" would still be infringement.

 

mjewel:

With all due respect, I disagree with part of your post. I do agree that a search must be comprehensive, but there is HUGE gray area when you talk about juristiction and usage. For instance, two restaurants, one in California, and the other in Maine, both call their place 'Hotdog Hut'. There is far more to the issue than just 'first use.' Just because the guy in California had a place named 'Hotdog Hut' first, doesn't prevent the guy in Maine from trademarking it. These issues are quite complex and best discussed with an attorney.

BTW, I'm not an attorney, but I am a published author at a major house, including
a series of books along the lines of the 'Dummy' series. I have been through the trademark process several times and own a new series name that will be out in 2007.

That said, you can be the first to use the name on a product, but that doesn't protect it from someone else taking it and wrapping it into a series or group of products or publications.

Let's say, for example, an author did a one-off book called 'Internet for Morons', sold it to a publisher and never wrote again. Another author comes up with the idea for a series of books that all end in "...for Morons" (i.e. taxes for morons, golf for morons, etc. like the "Dummy" series,) he can trademark the 'for morons' and protect all media, including books, software, calendars, dayplanners...anything that ends in '...for Morons', despite the fact that the other guy wrote 'Internet for Morons' a year before.

In other words, just creating a trademark and using it does not automatically protect it, like copyright law. There is gray area there and it should be discussed with a patent attorney.

For kicks, I went to Amazon and searched 'for Dummies' and you can guess what came up...thousands of black and yellow books from the same publisher, Wiley.

 

Well, we can agree to disagree. I too, have been through the trademark process, own several Federally Registered trademarks and service marks. I also ran a public company that had a national chain, the name of which was trademarked.

ANYTIME you use a name with prior usage you have potential infringement issues if your usage overlaps. We are talking about domain names and jurisdiction is not an issue in the United States. I also do not agree with your example of "Hot Dog Hut" or "for morons"- the first user could absolutely object to any attempt to trademark the term. Allowing someone else to trademark the term "Hot Dog Hut" would limit the first users ability to expand into another market (franchise) or to sell a product under that name. As far as damages, it would be hard to argue that a single location on the West Coast was harmed by a location on the East Coast - it all depends on the first usage intentions for their name. The trademark office doesn't check for prior usage other than a check of exisiting registrations, so it is possible that a trademark could be granted - but that would not allow the trademark holder to stop the first usage from continuing to use the name. A single location that doesn't transact interstate business couldn't even obtain a Federal Registration.

The trademark process takes approximately six years to become "uncontestable" - so applying for a trademark that has prior overlaping usage is a very risky approach. Anytime during the six years you run the risk of having your application contested. I wouldn't want to build a business name for 5 years only to have to change the name, and potentially pay damages.

I have a friend whose wife had a single tiny dress shop in the Napa Valley. One day they received a letter from a law office offering to buy the name of their business for $10K. My friend recoginized the law firm as being one of the largest intellectal property rights firms and knew they had to be representing a large client.

To make a long story short, the CEO of the one of largest specialty retailers in the world had been on vacation and happened to walk into this store. It turns out that they were a couple of months from opening 6 test stores for a new concept and somehow their extensive trademark search had failed to discover that the name they were using was the same as this little store. The major retailer was in a situation where they already had marketing, signed leases, signage, etc., and they knew they were subjecting themselves to an infringement claim. They wound up paying six-figures for the name - an amount worth more than the business. The irony is that the test concept didn't work and within a year all stores were closed.

Trademark law can be very complex, and does have grey areas. When you are talking about domain names, you should certainly do a prior usage search and get advice from an IP law firm. As someone who has spent a large amount of money on trademark infringement litigation, you don't want to use a name that is going to be problems down the road. Even if you are successful in your defense of using a name, you could easily spend six-figures in legal fees that you would be unable to recover. Unless you are very serious about a name, spending six-figures to defend your usage isn't something most people want to go through.

I once ran up a fair sum in legal fees because a large retailer objected to a single sign in a retail location that said "_________ price, our price______". Their claim was rediculous, and would never have held up in court. Their CEO was from Europe where trademark laws differ, and while they would have never won, it became apparent that they were willing to spend a lot of money and drag it through the courts. On principal I wanted to fight it, but as there were shareholders, it was in their best interest to agree to a compromise and cut legal fees at $30K (and this never even went to court). This retailer had the ability to spend a lot more money, and it just wasn't worth defending an action that a store manager took upon themself to do in the first place.

There are terms that are so generic that they are not subject to infringement claims, but you are asking for trouble anytime you use a name, in a similar manner, that has existing and ongoing prior usage.

 

mjewel:

Thanks for you detailed reply.

We're essentially arguing the same point on different sides of the issue.

To summarize, anyone can claim a trademark, and anyone else can contest it, whether they have grounds to or not. It boils down to first use, expansion intentions and prior usage (among other points). These issues can cause severe puckering of a certain body part for several years, if one ventures into a trademark claim without conducting thorough research first.

And yes, one is best served by a patent/trademark attorney if there's gray area, and there's always gray area.

Have a nice weekend.

-Mook

 

Yeah a trademark does not give you exclusive use anywhere and everywhere. I have been involved with businesses that had to use different names in some places because of an older business that had been using a similar name for a longer period of time.

If my family had a little 5 & dime in podunk Texas since 1895 that was called Wal-Mart Fine Goods, Wal-Mart does not just get to kick me in the nuts because they own the trademark.

A trademark is surely worthwile to protect yourself going forward, but it is not a magic wand to make everything in the past disappear.