Do I need to trademark my domain?

[rch1234]

Hi

Can I ask, is it standard practice to take out
a trademark appl'n on a domain name, if you are
going to use that name in a business capacity
i.e. as a trading website, selling goods/services
etc..?

Say I own a generic name, e.g. legal.com, that I
am wanting to use for a trading website. Now, I
am not concerned with registering a trademark on
the term 'legal' (which could not be enforced anyway)
but do I still have to TM the reference 'legal.com'
even 'though I own the domain name?.. And, is
it possible that someone else (other than me)
could successfully TM the domain addy, 'legal.com'?
Or, as this is obviously an internet domain name,
would the applicant first have to prove their
ownership of the name to the TM authorities?

Anyone have any experience/knowledge in this
area that they would be willing to share?

All the best

Richard

 

[olebean]

It would be difficult to trademark legal, you could trademark legal.com and advertise it as a trading name simply by putting in this format and keeping a note of the date you suggested it was a trademark........

legal.com ™

Registering a trademark will cost a min of £200 for only one cat extras are £50 or £80 each cant remember which.....

I depends on how much you have to invest and the potential return, most regged domains aren't worth the investment.

 

[paymatters]

Are you trade marking it just to stop someone else taking it off you??

 

[retired_member11]

You can apply to register a mark but another party can object if they are already using the same mark for the same class of goods and services even if their earlier mark isn't a registered mark. They would have existing unregistered rights and you would have immense difficulty in getting your application past the registrar under such circumstances.

Adding .com or .co.uk as a suffix is not relevant to the registrar. It is the substantive element that counts.

There is no direct link between ownership of a domain name and ownership of a similar trademark because there are 45 general classes of goods and services under which a mark can be registered and there is no legal obligation to register a mark before using it to trade. Therefore, even though Megacorp has a registered mark for 'xyz' in 44 classes (so many classes is very unlikely), as long as you are only using xyz.com for goods and services in the one remaining class you are not violating Megacorp's trademark rights. Megacorp doesn't have an automatic right to the registration of the domain. If you try to sell it to Megacorp then you will be exposing yourself to the probability of having the domain taken from you under cybersquatting rules.

 

[rch1234]

Hi guys,

Thanks very much for the great replies!

Richard

 

[texidriver]

"Adding .com or .co.uk as a suffix is not relevant to the registrar. It is the substantive element that counts."

The UK patent office has registered .com's...sexbet.com

as has the United States Patent and Trademark Office...sexbet.com

but that does not mean if you regg money.com you also get money the word

(Time Inc.)

rch1234
this is about trademarks/domain names in UK

http://www.patent.gov.uk/tm/whatis/domain.htm