Trademarking a name but someone already has the .com

[ls1904]

I have been planning on starting a company in California, but ran into a problem. I was going to name my company "example name" but "examplename.com" is already taken. I do not want a .net or .org or anything else besides the .com. I do not want to change the name of the company and i do not want to add a dash like "example-name.com". The name i want to use is not trademarked and my question is:

If i trademark "example name" can i force the owner of "examplename.com" to turn over the site name to me?

The owner is not using the site and has been just holding onto the name for 8 years. He has a few other sites registered to him and they all redirect to 1 site that is just a white index page that goes no where. The name i want is not trademarked right now.

If not what other options do i have besides buying the name from the owner?

 

[quincy]

When you say the name is not trademarked, do you mean it is not federally registered or that there is no business anywhere that is connected to the name?

You have a few options. You can change the name of your proposed company; you can keep the name for your proposed company but pick a different domain name; you can offer to purchase the existing domain name from the current owner. The current owner does not have to sell.

Domain name registration does not on its own gain trademark protection, so the current owner of the domain name cannot prevent you from using the same or a similar name for your company, if the owner of the domain name does not already use the name to identify his own product or service.

It is only when a product or service becomes known by a certain name/identifier that a trademark holder can potentially prevent others from using this name or a similar one in an internet address.

Many companies share similar domain names, by the way.

 

[ls1904]

quincy
When I say the name is not trademarked, I mean it is not federally registered and that there is no business anywhere that is connected to the name? (unless you want to include a clothing brand that failed and is no longer active, or music groups. I checked this site to see if the brand is trademarked, http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4005:biup2n.1.1
There are two similar trademarks that are listed as abandoned or dead.

I do not want to change the name of my company; I might keep the name for my proposed company but pick a different domain name like with a "-" in-between the words or use .net; I also might offer to purchase the existing domain name from the current owner. I am still a student and do not have much money for the start-up so I will be low balling him. Maybe offer him as much as he has paid to have the site registered for 8 years. (I think he pays 10$ a year to register the name) If he doesnt take that then i will offer double, so 160$, and if he doesnt take that then i will just register with a dash or .net.

Should I trademark my name before making an offer to the owner of the domain just so he doesnt get the idea to trademark it?

 

[BigMouthWino]

quincy
When I say the name is not trademarked, I mean it is not federally registered and that there is no business anywhere that is connected to the name? (unless you want to include a clothing brand that failed and is no longer active, or music groups. I checked this site to see if the brand is trademarked, http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4005:biup2n.1.1
There are two similar trademarks that are listed as abandoned or dead.

I do not want to change the name of my company; I might keep the name for my proposed company but pick a different domain name like with a "-" in-between the words or use .net; I also might offer to purchase the existing domain name from the current owner. I am still a student and do not have much money for the start-up so I will be low balling him. Maybe offer him as much as he has paid to have the site registered for 8 years. (I think he pays 10$ a year to register the name) If he doesnt take that then i will offer double, so 160$, and if he doesnt take that then i will just register with a dash or .net.

Should I trademark my name before making an offer to the owner of the domain just so he doesnt get the idea to trademark it?

You have no established brand to trademark. In any event he had the name first so if you make waves he could very well sue you and obtain possession of your trademark. How about adding corp or inc to the back of your company name? Lots of companies with the same names do this if they are corporations.

Do not expect that he has held this domain for 8 years to only double his registration fees. If it's a marketable domain he will want market pricing for it. If you are in a creative business, get creative and come up with a new name that isn't taken.

 

[quincy]

quincy
When I say the name is not trademarked, I mean it is not federally registered and that there is no business anywhere that is connected to the name? (unless you want to include a clothing brand that failed and is no longer active, or music groups. I checked this site to see if the brand is trademarked, http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4005:biup2n.1.1
There are two similar trademarks that are listed as abandoned or dead.

I do not want to change the name of my company; I might keep the name for my proposed company but pick a different domain name like with a "-" in-between the words or use .net; I also might offer to purchase the existing domain name from the current owner. I am still a student and do not have much money for the start-up so I will be low balling him. Maybe offer him as much as he has paid to have the site registered for 8 years. (I think he pays 10$ a year to register the name) If he doesnt take that then i will offer double, so 160$, and if he doesnt take that then i will just register with a dash or .net.

Should I trademark my name before making an offer to the owner of the domain just so he doesnt get the idea to trademark it?

While I tend to agree with BigMouthWino that coming up with an entirely new and unique name to go with a new and unique company is generally best, BigMouth is not right about registration of a trademark or domain name owners' rights.

Owning a domain name does not, on its own, create any trademark rights. All the registration of a domain name does is provide the domain name owner with the exclusive right to use that name as their web address. If the domain name owner only has a domain name and no company or product or service under the same name, the domain name owner cannot sue for trademark infringement and the domain name owner cannot "take possession" of another's trademark.

If you do not want to change the name of your company, and you have checked to make sure that no one else is using the same name for their company or product or service*, then any one of your proposals could work and you could also register the name. The decision is pretty much up to you.

If the owner of the domain name is not using it, he may very well sell it for the amount of his current investment in the domain name, or perhaps for double the amount of his investment. However, he does not have to sell. He may have plans to use it in the future himself. And you are not using the name in commerce to identify any product or service, so you cannot demonstrate any legal right to the name.

You can also vary the domain name with a dash or dots or additional words, or use a .biz or .net instead of .com.

The most important thing to remember about trademark law is that it centers on consumer confusion. If your company name can confuse consumers into thinking it is in fact another company operating under the same or a similar name, or there is a likelihood a consumer could become confused as to the origin of a product or service, a trademark infringement action becomes a real risk.

To gain some protection for your company name before you use your mark commercially, you can submit to the USPTO an "intent to use" application. This will initially reserve the mark for six months from the date the mark is approved by the USPTO, with approval potentially taking six months to a year. This trademark reservation on the name is potentially extendable for up to 5 additional six-month periods, if good cause for extension can be demonstrated.

Actual registration of your mark will not occur until you start to use the mark in commerce, as an identifier for your company, your product or your service. You must then file an Allegation of Use for Intent-to-Use Application to let the USPTO know that your mark is now in use.

*As a note: A trademark does not have to have state or federal registration in the U.S. to have protection under trademark law. A search of registered trademarks may not be sufficient to determine if the name you intend to use for your comapny is in use by another. Many people will hire a professional trademark search firm to make sure there will be no trademark infringement surprise in the future.

For more information on trademark registration and an Intent-to-Use Application, you can visit the USPTO website: http://www.uspto.gov

 

[ls1904]

First of all, thank you both for your replies. They have been very informative and helpful.

BigMouth:
What exactly defines an established brand? 1 sale of product?
He has the domain name first but he does not have a trademark or a product from what i have researched. I have considered adding inc to the end of the name, but then again this is almost more of a hobby to start and I am hoping it develops into an established brand. It is not like I have employees, this is me doing it by myself to start and am hoping to slowly grow if the brand catches on. If the domain name was marketable don't you think it would have sold by now?

Quincy:
It is a relief that owning a domain does not give trademark rights. I do not want to change the name, so I am hoping he will sell. If not i will slightly alter the name to "example-name.com" or maybe if i incorporate it "examplenameinc.com" or maybe i will just stick with "examplename.net" If a person uses the "examplename" selling tshirts or as a band name, is that considered using it in commerce to identify the product? Would they have legal rights even without a trademark?

I am trying to decide if I should just make a sale of the product before i submit an "intent to use" to USPTO or if i should trademark it first.
How much do professional trademark search firms cost?
What are both of your credentials pertaining to the trademark topic?
Or what is your source where your information comes from?

Thanks Again

 

[TheGeekess]

First of all, thank you both for your replies. They have been very informative and helpful.

BigMouth:
What exactly defines an established brand? 1 sale of product?
He has the domain name first but he does not have a trademark or a product from what i have researched. I have considered adding inc to the end of the name, but then again this is almost more of a hobby to start and I am hoping it develops into an established brand. It is not like I have employees, this is me doing it by myself to start and am hoping to slowly grow if the brand catches on. If the domain name was marketable don't you think it would have sold by now?

Quincy:
It is a relief that owning a domain does not give trademark rights. I do not want to change the name, so I am hoping he will sell. If not i will slightly alter the name to "example-name.com" or maybe if i incorporate it "examplenameinc.com" or maybe i will just stick with "examplename.net" If a person uses the "examplename" selling tshirts or as a band name, is that considered using it in commerce to identify the product? Would they have legal rights even without a trademark?

I am trying to decide if I should just make a sale of the product before i submit an "intent to use" to USPTO or if i should trademark it first.
How much do professional trademark search firms cost?
What are both of your credentials pertaining to the trademark topic?
Or what is your source where your information comes from?

Thanks Again

FreeAdvice does NOT vouch for or warrant the accuracy, completeness or usefulness of any posting on the Forums or the identity or qualifications of any person asking questions or responding on the Forums.

 

[quincy]

First of all, thank you both for your replies. They have been very informative and helpful.

BigMouth:
What exactly defines an established brand? 1 sale of product?
He has the domain name first but he does not have a trademark or a product from what i have researched. I have considered adding inc to the end of the name, but then again this is almost more of a hobby to start and I am hoping it develops into an established brand. It is not like I have employees, this is me doing it by myself to start and am hoping to slowly grow if the brand catches on. If the domain name was marketable don't you think it would have sold by now?

Quincy:
It is a relief that owning a domain does not give trademark rights. I do not want to change the name, so I am hoping he will sell. If not i will slightly alter the name to "example-name.com" or maybe if i incorporate it "examplenameinc.com" or maybe i will just stick with "examplename.net" If a person uses the "examplename" selling tshirts or as a band name, is that considered using it in commerce to identify the product? Would they have legal rights even without a trademark?

I am trying to decide if I should just make a sale of the product before i submit an "intent to use" to USPTO or if i should trademark it first.
How much do professional trademark search firms cost?
What are both of your credentials pertaining to the trademark topic?
Or what is your source where your information comes from?

Thanks Again

To answer for BigMouth, an established brand would be a product or service that is recognized by the consuming public, often through the brand name or logo (think Coke, Ford, Chanel). Your trademarked name, logo, slogan attaches to your company, product or service and identifies it to the consuming public.

If someone is using "examplename" to sell teeshirts, the "examplename" would be considered the teeshirt trademark. Because trademark rights are gained through the use of the mark in commerce, the maker of the teeshirts gains rights in the trademark by virtue of using the trademark to identify his product.

One thing you may wish to consider with an Intent to Use application is that the costs to reserve a name are equal to the costs of registering your trademark once it is used in commerce, so you will essentially be paying twice if you decide to reserve your name for use later - paying once for reserving the name and once for federal registration of the name. It is up to you to decide if you wish to spend the money to reserve the name for future use.

You will have to check out various search firms for their costs, as costs will vary.

The information I provide on FA is based not only on my education but also on the work that I have done in the past, and the work that I currently do, and on additional research as needed.

That said, if you wish to have an attorney address your specific legal needs and concerns, you will have to consult with an attorney in your area. This forum is designed to provide visitors with basic legal information only, so they can become more knowledgeable about the area of the law that concerns them.

No information provided on this site should ever be relied on or take the place of advice offered by an attorney in your area who can access all facts and provide advice based on a personal review of these facts. You may wish to read the Terms of Service at the bottom of the page.

edit: Yes, what TheGeekess said.

 

[BigMouthWino]

If the domain name was marketable don't you think it would have sold by now?

quincy answered everything else so I will answer the last open part of your query:

The domain name is marketable because you want to buy it. One does not sit on a domain for 8 years to make $100. Do you believe that most businesses survive on a $12/year margin? It will cost you a pretty penny to acquire the domain. If you build up the .net side of the domain it will make his .com that much more valuable. I strongly suggest you come up with a unique name for your business. You claim it is creative in nature - so get creative and make up your own name - or buy the domain - just be prepared to open your wallet wide.

 

[quincy]

If you build up the .net side of the domain it will make his .com that much more valuable. I strongly suggest you come up with a unique name for your business. You claim it is creative in nature - so get creative and make up your own name - or buy the domain - just be prepared to open your wallet wide.

A correction once again to the information provided by BigMouthWino.

If ls1904 builds up the .net side of the domain with his trademarked name, and his company, product or service becomes recognized by the consuming public by this trademarked name, the current owner of the .com domain with the same name as ls1904's trademark may find he has to give up the domain to ls1904 if he attempts to use it. Therefore, the current owner may be wiser to sell it now rather than potentially have it wrested away from him later.

Again, the current domain owner does not have to sell it but, because ls1904 has alternatives to the use of the currently-owned domain, he does not need it to use the same name for his trademark. The value of the .com domain, in other words, is only what ls1904 wishes to pay for it.

I agree with you, BMW, only in that it is always best to come up with a unique name for a new company rather than using a name that someone else has ties to, whatever those ties may be. A unique name can eliminate complications and legal risk.

 

[ls1904]

So I dont see the point in spending money trademarking something if I could instead just make a product and then sell it and consider it trademarked. And there is absolutely no way i would pay more than a couple hundred dollars for that site so if he doesnt sell ill just use a different name or .net
Does anyone have a preference on a specific trademark search firm? Or should i just google it.
Thanks for all your info guys.

 

[Zigner]

Seems to me that the other party is using examplename to drive traffic to his primary website (apparently, that primary site sells domains.) As such, couldn't it be considered as using the mark in commerce?

 

[ls1904]

zigner
it is not to drive traffic, because his main site is an index page with only 2 links that are not clickable by anyone else but the admin. I think he is just holding them until someone offers, or maybe he has an idea but has not done anything with it for 8 years.... who knows.

 

[BigMouthWino]

zigner
it is not to drive traffic, because his main site is an index page with only 2 links that are not clickable by anyone else but the admin. I think he is just holding them until someone offers, or maybe he has an idea but has not done anything with it for 8 years.... who knows.

Have you contacted him to see what he actually wants for the domain?

 

[quincy]

So I dont see the point in spending money trademarking something if I could instead just make a product and then sell it and consider it trademarked. And there is absolutely no way i would pay more than a couple hundred dollars for that site so if he doesnt sell ill just use a different name or .net
Does anyone have a preference on a specific trademark search firm? Or should i just google it.
Thanks for all your info guys.

I'm sorry, ls1904, but no one on this forum can provide you with the name of a specific search firm. FreeAdvice's terms of service prohibit posters from posting commercial messages or advertising links.

You can, however, go to http://www.uspto.gov/trademarks.process.search for information on free searches of federally registered marks and you can google "Trademark Search Services" or "Patent and Trademark Search Services" to find various and assorted search firms to compare and contrast.

As for whether to register your trademark, that is up to you. Registration is not necessary to gain trademark protection for your mark. Registration does, however, give notice to your state or the country that the mark is in use, which can help to prevent someone from infringing on the name.