Legal · Trademarks

Securing company name legally after buying on GoDaddy

John Dyrek Medical Economics at Aetna

January 24th, 2016

What other actions (legal) need to be taken to secure a company name after buying the domain on GoDaddy?

Joleen Hughes Founder, Hughes Media Law Group

January 24th, 2016

You should definitely think about registering the Trademark strategically in the countries and categories of business you will be involved in.  You may also wish to protect products names.  Something else to,consider if you are going into business with anyone else, is getting your corporate paperwork sorted out to ensure the company assets are legally owned by the company, which does include trade names and domain names.

Michael Brill Technology startup exec focused on AI-driven products

January 24th, 2016

www.uspto.gov

Anthony Zeoli Digital Strategy and WordPress Consultant and Trainer

January 24th, 2016

You might want to consider a trademark for you domain name and logo, but they have to be done correctly. Trademark of a trade name and trademark of a logo are two different things. Same process, but make sure you talk to a trademark attorney so you can protect your wordmark and logo. Plus you'll be trademarking your name for specific categories you do business in. For example, my trademark for Netmix is for streaming music on the Internet and for music sales on the Internet and that's it. So, you'll want to consider what categories you want to cover. I would let a qualified trademark attorney do this. I did mine myself and probably could have avoided some issues that came up later, so hiring a qualified trademark attorney is important.

Nathalie Salami Founder and Chief Legal Officer at HitFin

January 24th, 2016

Hi. You should register the company and if you want exclusive right to use the name in the US you should trademark it.

Lawrence Graves IP/Int'l/M&A lawyer, Coolidge & Graves PLLC

January 24th, 2016

Start by changing registrars.  goDaddy is the worst in the industry if your domain is hijacked (by rogue employee, etc.), as they will only give it back if you get a court order.  By contrast, Register.com will give it back if the company president sends a letter.  I've had to deal with a few of these, and it happens more often than you might think.
Now, as to your real question:  use of a mark in interstate commerce gives you common-law trademark rights, so it may not be necessary to register.  You shouldconsult with IP counsel for advice specific to your circumstances.

Mark Wilson

January 24th, 2016

Well maybe I'm taking your question too literally, but when I did this recently it was a 2 step process.  I bought the Domain Name on GoDaddy and then I went to the CA Secy of State website to check for the name availability to form a corporation of the same name in CA.  While you can't be sure of getting your name, if you do a search and nothing comes back that's a very good sign.  Then I went to LegalZoom to form my corporation.  All went well.

Mark

Scott McGregor Advisor, co-founder, consultant and part time executive to Tech Start-ups. Based in Silicon Valley.

January 24th, 2016

You probably need to file a Ficticious Name statement, also known as a DBA (for Doing Business As) filing. You can probably do that at your city clerk or count clerk office. If you file as a corporation or LLC the state will grant you the name as part of incorporation under that name. You probably want to start claiming your name as a trademark. Start by putting that little TM next to your name when you use it in commerce (on products, literature, web sites). If you have a service use SM instead of TM. At some point you may want to "register" your name with the USPTO (patent and trademark office) for even stronger protection. At some point you might want to spend 1 hour with an attorney, as most people don't really understand the limits of their trademarks. Scott McGregor, mcgregor94086@me.com, (408) 505-4123 Sent from my iPhone

Jay Monahan Advising entrepreneurial companies.

January 25th, 2016

Yes, definitely seek trademark protection at least in the US.  The fact that a name was available to register as a corporation does not mean it is cleared as a trademark.  A trademark prosecution lawyer would do a Trademark Office search as well as a common law search.  You are likely to want to file in one or two classifications, depending upon your product. 

If you can afford it, you should also consider filing trademark applications outside the US.  The most logical next choice would be to file a European Union trademark application, which covers all countries who are members of the EU.

If you sucessfully secured your domain name registration, you might want to register any names that are outside of .com and/or phonetically or visually similar to yours.   Its just a way of preempting someone who might try to capitalize on misspellings of your domain name and divert traffic to their own site.

By the way, the previous commenter was correct that there is a difference between filing for a word mark and a device (logo) mark.  If you can get a word mark that is better because it provides some protection for anyone using your name in any form.  A logo mark will limit your protection to people who use your name, but only in a way that is confusingly similar to your logo--not any use of the name. 

Good luck.

Michael Brill Technology startup exec focused on AI-driven products

January 25th, 2016

John, I'm assuming you spent $0.99 on a domain name for something that might turn into a business one day and you want to try to protect your right to use that name in the future but you don't want to spend a lot of money. Nor do you want to create an entity right now.

To that end, you probably don't care about FBNs, foreign trademark registrars (if you really care about this, then talk to a lawyer), using "TM", common law rights from interstate commerce, registering with the state, logo marks, etc.

Google the crap out of name variants to see who's using it and how. If you find some that are marginal, then run them by a couple people to get a second opinion, go to uspto and spend a few hundred dollars.

If you're more serious about protection hire a lawyer.

Phillip Barengolts Partner, Pattishall McAuliffe, Counseling Clients in Trademark, Unfair Competition, Advertising and Copyright Issues

January 25th, 2016

John:  I work in this legal space with companies and entrepreneurs throughout the country and the world.  Some of the advice above is spot on: once you start to use a name in connection with a business, you are developing rights in the name (simply owning a domain name that points to a holding page or "coming soon" page does nothing).  If you're not ready to start the business or put together a website that tells the world what the business will be, then applying to register the name with the Patent and Trademark Office is a better way to secure it (basically, if you would be upset if someone started using the same name for the same business tomorrow - before you got going - then applying to register is something you should seriously consider - whether you do it through a lawyer or do it yourself).  That said, just because a name is available for purchase as a domain name or you even apply to register it with the PTO, does not mean you have the right to use it for any business (imagine if you bought the domain name apple-computer-sales.com and began selling computers using the name "apple" - clearly you'd receive a cease-and-desist letter).  You should check with a trademark lawyer to determine whether the name you chose is, in fact, available for use in connection with the business or product you intend to use it for (some of the DIY suggestions above are a good start too, but if it's going to be your business name and you hope that it has legs (as we all do), then some upfront investment in making sure you're not walking into a lawsuit makes sense.  Seeking trademark registration in the U.S. is a good next step because that announces to the world your claim of rights in the name (and provides other benefits once you get the registration).  Happy to talk to you about it if you want to email me or give me a call - I don't charge for initial consultations.

Phil