Trademarking a name

[recover]

Hello,

I have a question and hope I can get an answer to it.

Basically i have 2 LLCs..one is a California LLC and the other one is a Delaware LLC


I want to trademark a domain name and was wondering if it is possible to trademark that domain name through my delaware llc? I do not have another llc that is linked
to that delware llc in California.

My Delware LLC's information (managing officers) is not listed and that is the reason why I want to do this, to keep my privacy.

I will have the website/business collect payment through the california LLC, but just want to trademark the name of the domain through my Delaware LLC.

I am a one man operation and not a huge corp, so I prefer to have that trademark setup through my Delaware LLC.....

In the future, when I plan on selling my domain/business, will I have issues doing this if i have the trademark setup through the Delaware LLC?

Thank you for your time, really appreciate it.

 

[quincy]

Trademark rights arise through the use of the trademark in commerce, on a business, product or service. You cannot "trademark a domain name." A domain name on its own is just a web address. A domain name could potentially contain your trademark, though (if the domain name is available).

 

[recover]

Trademark rights arise through the use of the trademark in commerce, on a business, product or service. You cannot "trademark a domain name." A domain name on its own is just a web address. A domain name could potentially contain your trademark, though (if the domain name is available).

I see, that most of the popular domain names are all trademarked. I want to trademark the name, because in the future when the domain name/business gets bigger, i do not want someone, then registering the trademark for the domain i have and then suing me....

 

[quincy]

Where are you seeing that most popular domain names are trademarked?

I'm sorry, recover. I think I am misunderstanding your question?

You want to register a domain name. The domain name will use the name you plan to use for your LLC?

 

[justalayman]

one more question:


is your business actively using the name/trademark now or is this a future use issue?

 

[recover]

Where are you seeing that most popular domain names are trademarked?

I'm sorry, recover. I think I am misunderstanding your question?

You want to register a domain name. The domain name will use the name you plan to use for your LLC?

No, basically lets put it this way...there are lots of popular sites out there these days and all of them are trademarked. Most of these sites do not have an INC or llc behind them with the same name...but the sites are trademarked.

I want to simply trademark a domain name/site that i will be doing business on, so later on I do not get someone trademarking the name (when the site is huge) and then suing me.

I want to trademark the name using my Delware LLC....

If i can avoid going through the trademark process, i will do it but I just want to play it safe...

I see many popular site being trademarked and i guess i want to play it safe like them

 

[recover]

one more question:


is your business actively using the name/trademark now or is this a future use issue?

this website will go live in 2 months or 3 months and i want to secure the trademark before making the site live

 

[justalayman]

No, basically lets put it this way...there are lots of popular sites out there these days and all of them are trademarked. Most of these sites do not have an INC or llc behind them with the same name...but the sites are trademarked.

I want to simply trademark a domain name/site that i will be doing business on, so later on I do not get someone trademarking the name (when the site is huge) and then suing me.

I want to trademark the name using my Delware LLC....

If i can avoid going through the trademark process, i will do it but I just want to play it safe...

I see many popular site being trademarked and i guess i want to play it safe like them

You are misunderstanding how trademarks work.

As quincy stated, rights to a trademark are gained by use in commerce. If you have not used the name, you have no rights to the name. Now, you can file an application with the federal trademark office (ITU) (intent to use) http://www.uspto.gov/trademarks/teas/intent_to_use.jsp with the intent of using it within 6 months (there is a extension available but don't know the specifics off the top of my head).

as Quincy stated, you cannot trademark a domain name but you can use a trademark within the domain name. The popular sites, at least their domain name, are not trademarked. The business entity that owns that specific domain name may also own the rights to the trademark though.

as an example:

GM (General Motors) owns the tm GM. That does not mean they own the domain name www.GM.com. They do happen to own the domain but not because they own the trademark "GM". They own the domain name because they registered it first or purchased it from whomever did.

Is your Delaware LLC using the name? If not, they would gain no rights to the name as it is the entity that uses the name in commerce that earns the rights to the name.

 

[FlyingRon]

I disagree Quincy. You can use the DOMAIN as a trademark. An example is FOOD.COM. Food is descriptive and overly weak. It wouldn't be a trademark on it's own. However, with the .COM added to the domain it becomes a bit more fanciful. It's akin to "Food Network" being a distinctive mark from just FOOD. Another older technology example was people who used telephone numbers as trademarks. 1800FLOWERS is a distinctive mark, where FLOWERS itself would not be.

Of course, as you state lots of people have domains that use their mark seperate from the top level suffix.

Now that's the trademark law.

 

[quincy]

I disagree Quincy. You can use the DOMAIN as a trademark. An example is FOOD.COM. Food is descriptive and overly weak. It wouldn't be a trademark on it's own. However, with the .COM added to the domain it becomes a bit more fanciful. It's akin to "Food Network" being a distinctive mark from just FOOD. Another older technology example was people who used telephone numbers as trademarks. 1800FLOWERS is a distinctive mark, where FLOWERS itself would not be.

Of course, as you state lots of people have domains that use their mark seperate from the top level suffix.

Now that's the trademark law.

Nope. That's not trademark law.

A domain name is just a web address. The suffixes, like .com, .org, .edu, have nothing to do with a trademark. They are just part of the web address, like www. Domain names only act to direct a person to a web location. Nothing more.

Without a business, product or service for the trademark to attach to, and without this trademark being used in commerce, you have no trademark rights. There are no trademark rights in a domain name.

Again, a domain name is NOT a trademark. That is why you can have several "enterprises" and "flowers" and "foods" as part of a domain name without infringement. The first to register a domain name with just the name "flower" or "enterprise" or "food" has the right to that web address.

Now, a domain name can HAVE a trademarked name as part of it - and many do. And when a domain name contains the trademark, the trademark holder can potentially prevent another domain name holder from using a domain name that contains that trademark, if the use of the domain name confuses consumers or can be seen as diluting a famous trademark.

But there can be and there are several similar domain names, because the domain names themselves are just web addresses.


edit to add: google "Free Advice" and see how many domain names show up using these words. FreeAdvice is a trademark but that does not prevent others from using the words free and advice in their domain name.

 

[quincy]

No, basically lets put it this way...there are lots of popular sites out there these days and all of them are trademarked. Most of these sites do not have an INC or llc behind them with the same name...but the sites are trademarked.

I want to simply trademark a domain name/site that i will be doing business on, so later on I do not get someone trademarking the name (when the site is huge) and then suing me.

I want to trademark the name using my Delware LLC....

If i can avoid going through the trademark process, i will do it but I just want to play it safe...

I see many popular site being trademarked and i guess i want to play it safe like them

I was going to add on to my last post, but I will address some more of your concerns in this new post, recover.

First, I think you might be confusing copyrights with trademark rights. The contents on a website will be copyrighted. The copyright is automatic, once original and creative material is fixed in a tangible form. The copyright will protect from copying any of this original and creative material found on the website.

A trademark, on the other hand, identifies a business, business products or business services, and the trademark and the business, products or services may be featured on a website.

But copyrights and trademarks are different rights offering different protections to the holder of these rights.

You can often register a domain name with your trademark (your business identifier) as part of your internet address, but this only if your business, and the products or services offered by your business, are not the same or similar to those that already exist under a similar trademarked name. Domain names can be, and often are, similar to many others, and this is generally not a problem.

You can register your domain name under an alias for privacy reasons, although domain name registrants who register under an alias are often acting in bad faith when doing so. The real person behind the alias may not want to be identified and located - and this can often be (but not always is) for nefarious reasons.

However, even when the real identity of a domain name registrant may be disguised or hidden, it is still possible for the domain name from such a registrant to be wrested away from that registrant. The wresting away of the domain name can be done when the "anonymous" registrant is a cybersquatter who registers a domain name in bad faith, just for the expected current or future value of the name in the marketplace.

 

[recover]

One last question and thanks to all that responded. If i own suppose apple.com and it gets popular.....can someone start apple inc. or llc or even not start it and simply try to trademark apple.com and sue me and take that domain from me?

 

[quincy]

One last question and thanks to all that responded. If i own suppose apple.com and it gets popular.....can someone start apple inc. or llc or even not start it and simply try to trademark apple.com and sue me and take that domain from me?

The answer to your question is "it depends."

Yes, someone could start an Apple Inc. (this is a bad example to use, by the way ), but a lawsuit over a domain name would be unlikely. The taking of your domain name would be more likely if its use confuses consumers into thinking your website is connected to their popular or famous Apple Inc. business product or service. If it is your "apple" business product or service that becomes popular or famous, then you might be able to prevent their uses of the name "apple," potentially even in their web address.

There are many facts and factors that must be considered. There is no one answer that will apply to all situations.

If you own the domain name "apple.com," it is just a domain name - an internet address. If there is no business or business product or service to go along with this web address, it remains just a domain name with no trademark rights.

If, however, you have the domain name "apple.com" and you identify your business, your products or your services under the trademarked name of "apple," then your trademark is part of your web address and you can potentially prevent all others from using "apple" in their domain names, if the other uses of apple confuse consumers into thinking the other users of the name are connected in some way with your "apple" business.

Also, if another business identifies its business or products or services as "apple" and their business becomes famous as "apple," then this business could potentially prevent you from using your "apple.com." They could potentially take the domain name away from you.

There are many "apple" companies in existence right now and most peacefully coexist because they operate in different parts of the world, they offer different products or services, the businesses are not related, there is no consumer confusion. Their web addresses may or may not contain the words "apple." Only one web address can be a "www.apple.com" but there can be variations that use the word apple and this can be done without infringing on anyone's trademark rights (ie, www.applefruitmarket.com; www.appleclothesline.com; www.sugarapples.com).

The two BIG Apple companies (Apple Computers and Apple Music) have had trademark infringement problems, but not over domain names. Conflicts arose over the marketing of similar products under the same Apple name. It caused consumer confusion.

Businesses can often share the same or similar names if their markets are different, their products or services are different, and consumers are not confusing one with the other.

But, once again, a domain name on its own is just a web address. The address alone gives you no rights to anything but the right to a particular location on the internet.

I suggest, recover, that you sit down with an attorney in your area to go over all of the specifics of your plans and to obtain advice tailored to the facts of your particular situation. Everything provided in these posts is fairly general information. A personal review is advised.

Good luck.


edit to add: recover, you have mentioned both Delaware and California in your posts, but you have never identified your own state. What state do you live in? If you do not live in the U.S., it is important to note that both the copyright laws in the U.S. and, especially, the trademark laws in the U.S., vary in significant ways from the laws in other countries.

 

[FlyingRon]

Nope. That's not trademark law.

Umm...yes it is. You're not understanding my point.

A domain name is just a web address. The suffixes, like .com, .org, .edu, have nothing to do with a trademark. They are just part of the web address, like www. Domain names only act to direct a person to a web location. Nothing more.

Not true.

Without a business, product or service for the trademark to attach to, and without this trademark being used in commerce, you have no trademark rights. There are no trademark rights in a domain name.

Exactly the point. However, the name of a company, or the name of a domain, or a phone number, while not inherently trademarks by their definition, can be trademarks when used as a brand in commerce. There are indeed those who I have mentioned in the previous posts plus many more that assert both trademark rights and have achieved registration of those marks.

I disagree that the .COM etc suffix, or the 1800 in a phone number, etc.. can not be used to add fancifulness to what is otherwise a purely descriptive word. OVERSTOCK is not a trademark. OVERSTOCK.COM is and is registered.

 

[justalayman]

OVERSTOCK.COM is and is registered.

but that is not necessarily a website (although it wouldn't make any sense to copyright such a name if it wasn't your website). Overstock.com is a mark able to be registered because that is the name of the company. It isn't because it is also their domain name. If their company name was not overstock.COM, they would not be able to register overstock.COM as their trademark.