Domain names and trademark law

Filing for registration requires that you specify the IC and goods or services. You need to pay a fee for each IC that you file for. In addition you need to eventually provide a declaration proving use for the goods and services specified in the application.

The word "trademark" is a noun, not a verb. No can trademark anything -- what happens is that trademark rights develop over time when a word, phrase or design is used to brand and sell one or more particular products or services. Which answers your first question. A person who develops trademark rights in "someword" to brand Product X after you've developed trademark rights to brand Product Y can sue you for trademark infringement if you begin to sell Product X branded as "someword." The scope of your rights in "someword" extend only to brand Product Y. The other person has the senior trademark rights in "someword" to brand Product X. In short, a trademark is NOT a word monopoly -- it is a limited property right. As for your second question, assuming you in fact use "someword" as a trademark, not just as a domain name, then any subsequent user of "someword" as a trademark very likely will not prevail if he asserts that your registration and use of someword.com is cybersquatting [see 15 U.S.C. section 1125(d)]. HOWEVER, to build on the answer to your first question, if you infringe the other person's trademark rights in "someword" by selling Product X under that brand-identifier and set up your someword.com as the vehicle to sell those infringing products then, yes, you can be forced to stop using that domain name for that purpose -- but you will be allowed to use it to sell Product Y. Speak with your own Utah-licensed intellectual property attorney. As you can tell, disputes over trademark property rights often do not have black and white and answers. Good luck.

It sounds like what you are asking is whether you would maintain rights as a senior user of the mark and the answer is that you should assuming you did in fact acquire prior use rights. Now if they are only under common law those rights do not extend beyond your geographic market area and to its natural expansion. Merely having a website does not mean you are doing business everywhere just to be clear. If you have a federal registration then you can enforce rights in all of the US and its territories assuming that you are moving into that area. So for example, if you are operating in say FL and there is someone in MT using a confusingly similar name but you still have zero connection to MT then this other user can continue use until you take some steps to move into that area, which in a digital age should be easy to demonstrate and of course it would be silly for someone to invest in a TM that is already registered by another. That said, your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide. I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. Best regards, Frank Natoli-Lapin, LLC

My colleagues offer good advice. I would add that in order for the two marks to clash, they need to apply to the same goods or services that you acquired rights in. Identical marks in and of themselves does not disqualify some one from using such a mark if they are in a business that does not overlap. So for example, there is Dominion Bank, Dominion Sugar and Dominion electric and each trademark owner has valid rights.