What is the name of your state (only U.S. law)? Tennessee.
I own a domain name.
I am starting a business by the same name as the domain name, minus the ".com". I plan on trademarking the business name. I have searched and the name is not currently trademarked. Is it necessary, or better yet, wise, to trademark not only the business name, but the domain name I already own, as well? Am I correct in thinking I should trademark the name both ways? As a business name and as a domain name (with the .com included)? An example: my domain name is AbcXyz.com. My business name is AbcXyz. Do I need to trademark both ways? Thank you.
First, in the US, registration is not necessary to gain trademark rights in a name. The rights come with the use of the name as an identifier for your business, your products or your services. It will (generally) be the first to use the name in commerce who will be considered the owner of the trademark.
Registration, however, puts others on notice that the name is being used. Registration provides additional legal options should your trademark be infringed.
Registering your trademark AbcXyz with the US Patent and Trademark Office will protect this name from use by others or allow you to contest use by others. Since you are already using the trademark for your business, its use in your domain name is protected from use by others, as well. There can only be one AbcXyz.com domain name.
In order to file an application for registration, you must be using the name in commerce. If you have not yet used the name in commerce as an identifier for your business, you can file an Intent to Use application, to reserve the name for your use. You should plan on using the trademark in commerce within six months after you file an Intent to Use application, though, to take advantage of the earlier filing date. If someone comes along and files for registration of the name before you use the name in commerce or before you file for registration of the name, you could find it hard to retain the name.
One final note: Because trademarks do not have to be registered by the user of the mark for the user of the mark to have rights in the name, you need to expand your search of trademarks to not only federally registered trademarks but also state registered trademarks and marks that are not registered at all - this to ensure your use of the name is not infringing on anyone else's rights.
Having everything reviewed by an IP attorney in your area is never a dumb idea.
