Legal Question in Intellectual Property in California

I have an e-commerce site where I sell electronic goods. For now nobody registered a trademark of my website's name, do I need to do this to avoid somebody else registering the trademark and blocking me to exploit my website's name ? Thanks

Asked on 7/19/13, 1:46 pm

2 Answers from Attorneys

Bruce Beal Beal Business Law

First, domain names may or may not be trademarks. A trademark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. If you use your domain name in this way, i.e. closely associated with your products and services, you have a trademark, e.g. If your domain name is not otherwise associated with your products and services, then it is not a trademark. If your domain name is the name associated with your products, be sure to use the "TM" symbol next to your trademark in all conspicuous places on your website.

Second, first in use is first in right for trademarks. You don't have to register to obtain first rights in the trademark.

Third, since registration gives you the right to enforce your trademark right in federal court and other enforcement rights, and since it puts the world on notice that you are claiming trademark rights, it makes sense to register the mark once it is obvious that the trademark will have value.

We perform trademark registrations for very reasonable rates.

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Answered on 7/19/13, 2:16 pm

Bryan Whipple Bryan R. R. Whipple, Attorney at Law

I essentially agree with what Mr. Beal has told you. However, since I'm not in the business of selling trademark registration services, I'd like to add some impartial advice.

First, the level of legal (trademark) protection you get from registering and using a domain name is quite limited. Registering you trademark gives you significant advantages, both in protecting your trademark from infringement in the first place, and in being able to defend it against infringement, should it occur.

Nevertheless, there is a real business decision to be made before attempting to register a trademark. The factors that should go into a decision to pursue registration include (a) the likelihood that a competitor would use the name; (b) the detriment to your business through confusion, loss of business, etc. that would result; (c) the effectiveness of a registration in preventing someone else's use of the name, including consideration of the cost to bring and prosecute an infringement suit; and (d) overall consideration of the value of the name, vs. the possibility of sharing the name with another company (which would not necessarily be a direct competitor).

I'd say that if your e-commerce site has a really cool, distinctive name, which is distinctive enough to be trademark-able, and you are up in the $100K-plus annual sales area, you should trademark your name. Perhaps you can do so yourself; there are government sites where this can be done on-line. It takes time and patience, as the rules and the sites are not user friendly. Try as a starting point. If you have a big, prosperous company, run, don't walk, to Beal Business Law or someone else in that area of practice.

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Answered on 7/19/13, 6:31 pm

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