Intellectual Property 9

How do I actually register the trademark?

To register the trademark, you need to submit to the Patent and Trademark Office a written application, and a drawing of your mark. and You would also send in a specimen showing the mark in actual use (unless it is an “intent-to-use” application as mentioned above).

The address is
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
To request paper forms, call the Trademark Assistance Center, at 703-308-9000.Or you can apply for a trademark online through the Patent and Trademark Office web site at http://www.uspto.gov.

What if another company starts using my trade name or mark?

If you decide it is worth the cost of fighting the unauthorized use of your name or mark, you should contact an attorney. If you've registered your mark or name, he or she will send the company a letter demanding they stop using the name. If you haven't registered the name, the attorney can help you find out if you have common law rights to the name through first use and if it is worth the time and cost to pursue the matter.

I'm setting up my business on the web. The .com name I wanted to use is already taken. Is it OK to register the name as a .net or .org domain?

The answer depends on how strong your trademark rights are in the name versus how strong the .com company's rights are, how similar your line of business is to the .com company, and how much money either of you are willing to invest to fight for the name,
Thomas O'Rourke says, "As a general rule, if the dotcom name you would like to use is not a famous name that has strong trademark rights or if it is one that you have been using in your business for some time, you may be able to use the dot.net or dot.org domain name. For example, using the name McDonald's as a domain name for any commercial business would be risky unless the business is so removed from the food business that the public would not believe that you are licensed, endorsed or otherwise approved of or connected with McDonald's." (O'Rourke is a partner in the law firm of Bodner & O'Rourke in Melville, NY.)
However, if the .com company is bigger than you, has registered their mark nationally, and has an attorney on staff or on retainer, they might sue you. If they do, you'd have to decide whether keeping the name is worth the cost to fight the suit, or give up the name and possibly lose web site traffic or business as a result. Yet another consideration: .com is the more common domain. You could lose business just because people type in .com instead of .net with the name you want. From a business perspective, therefore, choosing a different domain name might be a better decision.
When you register your domain name, consider registering at least the .net and .org domains as well as the .com domain. Doing so will keep other companies from using those variations of your name. To get added hits from search engines and to give yourself a work area for your company, you might want to actually set up all three domains, too. Store some of the site on the .net domain, register it in search engines and link it to your main site for additional traffic. Use the .org area as a test area. Don't register it in search engines if testing is its intended use.

Are all domain names considered trademarks?

No. "The mere existence of a domain name in the absence of use by a business, such as in connection with the advertising and promotion of goods and services, or registration of intended use, does not necessarily create trademark rights," says O'Rourke. Thus if someone registered a domain name, but hasn't used it and doesn't use the name in business elsewhere, they may not have any trademark rights in it.

Do I need to check domain names before I choose a name for my business?

From a practical point of view, yes. Having a web site is becoming as common as having a business card. Even if you don't plan to put your new business on the web immediately, you may want to do so in the future. "Before you invest money and time in developing the goodwill in a company name, you should check the availability of both your company name and your domain name so you don't have to make changes after you've begun to use the name," advises O'Rourke.

I’ve been doing business under my name for several years and wanted to register it as a domain name, but someone else already took it! What can I do?

The answer goes back to the issue of how well established your name is, how widely established it is, and how much money you have to fight for the use of your name. If you have only operated locally, the company using your name as a domain name is located in a different state, and you have a limited budget, from a practical standpoint there isn't going to be much you can do if they are actually operating the site. If they have registered the domain name but haven't set it up, contact them and ask that they turn it over to you. But be prepared for a price tag with the name. As the Internet was first becoming popular, many people bought up domain names they thought might be in demand. They now try to sell those back to people who want them. On the other hand, if the use of the domain name "would be likely to cause confusion, mistake or deception leading the public to believe that the owner of the domain name is sponsored, endorsed or otherwise approved by you, you could have a cause of action for trademark infringement," says O'Rourke, "Your chances of success depend on how strong your trademark has become."

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