One of my blogs reached a level of popularity and income where I started thinking about trademarking the name of the site. I figured that would protect it from someone trying to steal my URL by changing “.com” to “.info” or whatever.
I hate legal stuff but I went ahead and did a bunch of research. Here’s what I found out. Note that I am NOT a lawyer, so check with your own legal counsel to be sure!
The Trademark Search
The first thing you should do is a quick trademark search. Go to the trademark section of the US Patent Office website, select TESS (Trademark Electronic Search System), then click “Basic Word Mark Search” and search for your site time and any similar names. If you find any verbatim matches, you might have to go back to the drawing board and think of a new name, or consult with an attorney. You should try some similar variations of your name, because those can cause trouble as well.
In addition, you should do a quick Google search to find any other instances of the name which might not have been trademarked but are being used. If someone else has been using the name longer than you have, you might want to steer clear. The same is true if someone a lot bigger than you (i.e., large corporation with deep pockets) is using the name.
There are a few other considerations. Some names are too general and generic and can’t be trademarked. For example, just because you have a website called “dogs.com”, that doesn’t mean you can trademark the word “dogs”. The name has to be more unique than that.
Your name can’t be misleading, either.
Start Using the Trademark Logo Now
No name conflicts? Good! Here is something cool I found out.
You can (and should) start putting the “TM” logo next to the names that you want to trademark. You can start doing this without doing any legal work! Just start doing it! Do it on your websites, brochures, business cards, etc. It will help protect the names or phrases and let people know that you are claiming them. Note that you cannot use the “R” logo (meaning “registered”) until you actually have the trademark in hand.
When to Trademark Your Website Name
Personally, I would only think about trademarking a website or blog name if it, or the business associated with it, was bringing in at least $10,000 per year in income. It costs almost $500 to get a trademark a business name or phrase (through Legal Zoom, a very inexpensive method), so it’s not cheap.
I would not trademark a name for a brand new website or blog right out of the gate unless you’re in a company that can afford it, or you are absolutely sure you are going to use the name.
What Form of the Name to Trademark
A few questions immediately popped up when I started looking into this. The first was whether trademark the URL with “.com” at the end. The answer is no. You can’t trademark a URL. You can trademark a product or service. So, just use the base name with no “http” or “.com” or “.net” or whatever.
The next question was exactly what form of the phrase I should trademark. Let’s say your URL is “http://gourmetsoutherncooking.com”. Do you trademark “gourmmetsoutherncooking” or “Gourmet Southern Cooking”? I asked a couple of lawyer/business friends and they said the latter would be best: “Gourmet Southern Cooking”.
The Trademarking Process
Now on to getting the trademark. Lots of friends recommended LegalZoom for small-time operations like me, so I tried it out. Let me first say that I have been in no way paid by LegalZoom to write this article. I just used their service.
The process was quite simple and painless. I answered some questions on their site regarding the name I wanted to trademark and the industry it was in, and they charged my credit card for the amount of $494. Part of this was their fee, part was for the trademark office (I forget how much each of the respective parts were).
Then there was an “upsell” offer at the end for a service called “Business Advantage Pro” for $20, a savings of $10 off the regular price. I declined this because it sounded like an unnecessary gimmick. I was wrong. More on that later.
The first thing they did was a trademark search. I figured nothing would turn up because I had done my own search. But they found a similar phrase that was trademarked and actually in dispute with a very large, well-known company. So actually they did a better job searching than I did!
Now I was left with a dilemma. Should I go ahead with the trademark given this similar name had already been trademarked? How important was that? I really needed some advice from a lawyer!
It turns out that is exactly what the “Business Advantage Pro” thing that I had turned town was all about. That would have given me the opportunity to have a short phone conversation with a real lawyer. That was exactly what I needed. I felt really dumb, but I went ahead and paid the full $30 for this service; it was still much cheaper than talking to a lawyer in person.
So, I paid the fee and LegalZoom gave me two lawyers to choose from, one of which had an open slot that day, so I made the appointment. He called me on time, and looked over my case, and the history behind the trademark dispute. He advised me to stay as far away as possible from the whole mess. If I tried to trademark my similar name, I could become a target of litigation from a large corporation! Definitely not something I wanted!
So, the conversation with the lawyer was worth every penny of the $30! I decided not to trademark my website name. Kind of disappointing, but even worse was that I had not read the fine print of the LegalZoom contract to see how much of the money I could get back. After all, they had done a trademark search. I was hoping to at least get the trademark filing fees back.
I called them up, expecting the worst, but amazingly, they refunded the entire amount to me! So in effect, I got a trademark search for free, and only paid $30 for the consultation with the lawyer!
So, even though my attempt to trademark my site’s name failed dismally, I hope there was something here that was helpful to you.
As much as we like to rant and complain when a company gives bad service, I also like to praise a company when it gives good service. I was very impressed with Legal Zoom‘s website, legal advice, and refund policy, and would definitely use them again!
Good luck with your trademark! – Brian
Note this article is for informational purposes only and does not constitute legal advice. I am not a lawyer. If you need real legal advice, please get a real lawyer.
Please Leave a Question or Comment
In principle, deciding on a domain name is straightforward. You’ve got yourself a winner if it’s memorable, pronounceable, short, smart, readily spelled, and suggests the nature of your website’s trade. However, even if your decision is amazing in terms of marketing, it may not be so wise in terms of legality.
You risk losing your domain name if it conflicts with any of the millions of business names that currently exist. And
if you’ve spent money and time marketing your website only to be compelled to give up the domain name, your online business is likely to suffer a serious, if not fatal, setback.
Trademark law provides the standards for determining if a legal conflict exists. Here are the fundamentals you should know:
§ Trademarks are names that identify the source of products or services in the marketplace.
§ Federal and state trademark laws protect witty, memorable, or suggestive trademarks.
§ Under federal and state law, descriptive trademarks that have gained distinction through sales and advertising can be protected.
§ When the use of both trademarks is likely to deceive customers about the products or services, or their source, one trademark is legally in conflict with the other.
§ In the event of a legal dispute with a later user, the trademark is owned by the first commercial user.
§ If a legal dispute is discovered, the later user will almost certainly be forced to discontinue using the mark and may even be forced to pay damages to the trademark owner.
Amazing piece of content, Thank you for sharing this blog.
Your article is very good, and can provide an understanding of trademarks, Thank you for sharing. intellectueeleigendom.nl
Awesome resources. Thanks!
Hi IAS TODAY,
I can’t say whether it is better or not. It costs money, so you’ll have to just make the tradeoff calculation in your particular case.
I am not a lawyer, but my understanding is that it is not illegal, but that you could get sued by the owner of the trademark.
Hi,how can register a website like facebook and alibaba..etc
Thank you for sharing this info on trademarking. This really helped.
I’m glad my article was helpful to you. Thanks for sharing!
I used legal zoom once and I cancled my sign up. The one thing I disliked about legal zoom was how long the process took. I signed up online and was charged $576 which was the fee for USPTO and legal zoom fees. I selected the business pro advantage as well. So, after I signed up I soon found out that it is a long process to legal zoom. The representative that contacted me after sign up told me that it takes weeks for them to send off your paper work to USPTO. He told me that they would be sending me forms through the mail to sign, conducting a search and etc. Well two weeks had passed after I signed up and nothing was being done on there end. I cancled because I think it’s best to do the paper work yourself or hire a lawyer. Legal zoom takes to longest process and by the time they send off for your registration someone else will been beat you to the punch.
Thanks for sharing. Sorry it didn’t work out for you.
Although I am not located in US, I faced a similar problem in trying to register my website name in China, it turns out to be really painful process, worst I did not get any refund.
Yen, thanks for sharing. Sorry you didn’t get the refund… – Brian