Incorporation · Trademarks

Trademark with .com or without .com ?

Max Avroutski

February 8th, 2015

Trademark and Incorporate with .com domain name TLD or without it?
Should I Incorporate <name>.com, Inc like "Amazion.com, Inc" and trademark <name>.com like "Amazon.com" did or should I just use <name>, inc and trademark <name> and use domain that ends with .com ?

Company name has 2 words in it that are not descriptive, but convey the meaning.

Also, My company will be providing services worldwide so there will be discussion whether to register <name>.fr, .de, ext  why companies do that anyway? To me it's just a spreading advertising and extra website maintenance Is there a legal requirement internationally? 

Both UPS and FedEx just use .com worldwide.
thanks for your suggestions.
Max

Corey Blaser Sailor. Mormon. Entrepreneur.

February 8th, 2015

I am going to echo the without sentiments. It will make for a stronger brand position for your name.

And the reason companies register the other extensions is not really for marketing, it is so that others cannot infringe on your trademark. Coke might use coca-cola.com exclusively worldwide as a marketing medium, but they don't want someone in Jordan to dilute their brand by creating a product similar using coca-cola.jo but outside their trademarks legal jurisdiction.

In fact the leading brands buy derogatory domains under a shell company as well. Try looking up targetsucks.com, it will only lead you to a dead server. They don't want some angry customer to register it and use it to slander their brand. $15/yr is cheaper than the thousands-millions they would spend down the line to clean up after slander and fighting a legal brand infringement lawsuit.

Edit: Oh, and as far as website maintenance with multiple domains, you can just forward your domains using your registrar to your main domain. It is a simple redirect that you registrar can guide you through. As an example, coke.com will forward you to coca-cola.com

Ryan Rigterink Midwest Manager at Hematogenix Laboratory

February 8th, 2015

IMHO. Brand name alone without .com is usually more important to claim and protect for your use.  Marketing materials often refer to the brand without the .com which could be TM by someone else if not protected.  You could always TM the brand.com also, but in my opinion would be secondary to brand name alone.

James Menker Partner at Holley & Menker, P.A.

February 8th, 2015

Legally, top level domain names like .com and .net have no source identifying function (which is what a trademark does).  The same is true of entity designations like Inc. and Corp.  Therefore, it would not normally be included in a trademark application.  Whether it is included in a company name is a personal choice and has no legal significance one way or the other.  Also, there is no reason why the two would have to be the same.

Alan Peters VP Product and Technology at BusinessBlocks

February 8th, 2015

Without

Annie Webber Founder and CEO at Legal Hero

February 8th, 2015

I agree with the folks saying "without." Happy to help you find a lawyer to get this done quickly, easily and a reasonable, fixed price. Let me know if you're interested.

Matt Sanford Engineer at large

February 8th, 2015

The consensus is "without" (agreed) but since you mentioned the country TLD issue I highly recommend taking a look at Global by Design, who have a pretty good run down of the best and worst practices when reusing your <name>.com address for a worldwide product: http://www.globalbydesign.com/category/global-navigation/

Nicole Donnelly Creating HappyCampers Every Day

February 8th, 2015

I just trademarked my name with the two words together because we couldn't get them separate. And then had the .com and as we grew and got distribution in different countries we used the local suffix if we had a local distributor. If we sold to that territory then they would be on the .com. Also language may be a reason to use a separate domain if you want to appear from that region. Take care, -Nicole Sent from my iPhone

Tom Maiaroto Full Stack Consultant

February 8th, 2015

Without. No one can file a trademark with because it's too similar. Which means with also probably doesn't matter much. I suppose you could get a broader use of it without the .com and still technically be able to put the (R) symbol next to it.

Keep in mind the various types of marks, specifically a standard character mark.

Michael Cohen Owner at Cohen IP Law Group, P.C.

February 9th, 2015

In most cases if you are unable to get it with the top level domain, you are unlikely to get it without it. The trademark office will reject your application if it is confusingly similar to another one. The ".com" tld will often not be enough to avoid confusion with another preexisting mark that is confusingly similar.

Hopefully, prior to your adoption of the company name you conducted a trademark search and opinion from an attorney that gave you some guidance as to the likelihood of success of registration. If so, as many above mentioned, applying for an application without the tld tends to be better. However, you need to apply for the mark exactly as how you intend to use it in real life. For example, if you primarily advertise or display it as "x.com" rather than just "x", then you have to apply for it as "x.com".

Sebastian Stoddart Non-Executive Director at Membr.com

February 10th, 2015

Whenever trademarking a name you should look to keep your mark as 'broad' as possible. This means that it will be more versatile and offer you greater protection. Registering 'ABC' for example, offers you greater protection than registering 'ABCHoldings'. Of course is ABC is already taken then you may need to extend the mark.

This is also the case when thinking about adding the domain to your trademark, it is limiting your scope for protection, although in this case if the original word was taken (ABC) then it is unlikely you would be able to register the mark with .com on the end anyway.

With web domains and Trademarks, the shorter the better.