Trademarking and Naming III

What about the url?

This is where things can get tricky and fun. The web domain name, or url, now plays a role in proving your trademark to the USPTO. You see, there is still a lot to explain about things the USPTO are looking for in your name.

Timing. You see, part of the reason for this law of trademarking is that two people can have similar ideas at the same time and these rules keep people from naming things the same way which help consumers differentiate and protects business people from being copied and stolen from. A url can help your right to the name in this way…

Let’s say I wanted to start a t-shirt company and I wanted to call it Wildhair Shirts. Before going to the USPTO the first thing I would do is Google the name and see what comes up. If nothing specific to that name comes up, my chances of getting  a good url and this name registered with the USPTO are going way up.

Then, I would go to my favorite domain purchasing and basic web hosting site, Namecheap, and I would search for wildhairshirts.com and see if it was available. If it was, I would buy it, as that is a great sign that the name is not being used by anyone.

Now, let’s say I bought the relevant urls (buying as many urls that cover bases like wildhairshirts.com, .org, .net and wildhairtshirts.com and other relevant names is a good idea for the same reasons that I would get the first) and built a published site for them describing my company and future products while I start working on the business plan that ends up taking me a couple of years to actually fully launch.

Within that time, someone else starts a company by the same name in a different state. They have a website called whclothingincorporated.com because I bought all the name specific ones before they launched…

Now, in our story, we went ahead and registered our business with the USPTO, and our other Wild Hair Shirt company didn’t register federally so no one is the wiser. Everything seems good. It has all worked out.

Until the other Wildhair starts to get big. They started local, but they grew, and when they expanded to a national market, they noticed me, as I have them. Now they want the registered trademark and they believe they started before me because they believe they used the name first. Now I am going to court. They want to prove that they had the name first, and that they were doing business first (It’s true, they sold a shirt before I did.) and that even though they hadn’t registered the trademark, they had it in use before I did. If they prove that, I will lose the rights to use the name and will be forced to rebrand. If they fail in proving that, then I will be awarded the rights to the name.

One of the pieces of evidence that a Judge will look at is, who had the urls first and who published a live, relevant website first. Since I was the first to get the urls and the site published, and I did the fed trademark work as well, I am likely to win. Notice I said likely. Nothing is guaranteed here. Even if I think I did everything right, the judge could possibly see something a different way and I could lose. This is why, despite these informative posts, I will always say “GET AN IP ATTORNEY!”

The attorney has more experience, and knows more about how to make your name as defensible as possible. In an ideal world, you have a designer like me on your team who knows all of the ins and outs of making marks visually distinctive, and you also have an ip attorney making sure those marks are defensible in a court of law.

The moral of the story is: If you have a great idea, and a good name that you know is unique and likely to be defensible, and you have googled for it, and searched and can’t find anything, and you have searched for the url and it is available… BUY IT. But don’t JUST buy it. Put some kind of website up describing what you are doing and the intention of the company. It doesn’t have to look good. It just has to work. WIX or Squarespace or Wordpress or a whole host of others will help you build a site for free. You just have to pay for the connection to the customer url. A published website is stamped and dated material and will help you defend your name if anyone ever tries to take it. Don’t just take my word for it, call an IP attorney and at least get a consultation. If they tell you something different, let me know and I will update these blog posts, otherwise they will likely just give you even more info to chew on and process BEFORE choosing all of this.

Peace and Love and Happy Building!

Jesse Barney