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Can I trademark a name even if the domain is already registered??

1 Answers. Asked on Sep 19th, 2013 on Intellectual Property - Nebraska
More details to this question:
The domain is already register and due to sell on auction in December. I want to trademark the name, I checked and it is not already taken. Then could I stop the auction and use of the domain?
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Answered on Sep 19th, 2013 at 1:44 PM

A trademark is a word, image, sound, appearance, etc. that conveys to a consumer that certain goods/services come from the same source. If you go into a McDonald's, you know what you are getting. If you buy a Chevy, you know what you are getting. To register a trademark, you must use the trademark in conjunction with the sale of goods/services.

A domain is an electronic location on the World Wide Web. Owning a trademark does not give you rights to a domain. Owning a domain does not give you rights to a trademark. It is highly unlikely that you could: 1) register the trademark by December (US trademark practice normally requires a minimum of 10 months to complete registration and will not complete any earlier than 3 months after you first use the trademark with the sale of goods); and 2) stop the sale of a domain based on a very recently registered trademark.

When domains were emerging 15 years ago, cybersquatters would buy up domains and try to ransom them to trademark owners. The law adapted and allowed trademark owners to force the transfer of the domains if the purchaser acquired the domain in bad faith (i.e., for the purpose of cybersquatting). Bad faith required some showing that they acquired the domain for the primary purpose of gaining economic advantage over the trademark owner. In your example, it seems highly unlikely the auction winner would be found to have made the purchase to try to gain an unfair economic advantage over you.

Those laws that were prominent ten years ago are rarely used today because trademark owners, by and large, have caught on to the need to maintain their domain names.

You can file for trademark protection now, but you'd probably be better off making sure you prevail in the auction first.

 

Good luck

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Intellectual Property
The legal system recognizes the rights of people and companies that invent and create unique works, granting them ownership of those tangible and intangible assets through a number of intellectual property laws. Intellection property, or IP, includes patents, trademarks, copyright, trade dress and trade secrets. Intellectual property attorneys work with businesses and individuals (including inventors, writers, composers, artists and designers) to help protect these intellectual assets. IP lawyers and law firms can assist with taking initial steps to protect assets, while also working with clients to license items and to protect assets that are plagiarized, infringed and/or misappropriated.
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