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

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.

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.

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.

Greg Sherwin vp engineering + it • singularity university

February 10th, 2015

Absolutely without. Imagine a future where you're stuck with the horrors of a name like "1800flowers.com" (What? 1800 flowers?).

.com has already largely given way to .io in some industry circles, and in this modern era of mobile neither makes much sense anymore. Your address and your identity should be two different things.

Greg Sherwin vp engineering + it • singularity university

February 10th, 2015

Absolutely without. Imagine a future where you're stuck with a silly name like "1800flowers.com" (What? 1800 flowers? I only need to purchase a dozen).

.com has already largely given way to .io in some industry circles, and in this modern era of mobile neither makes much sense anymore. Your address and your identity should be two different things.

Alan Peters VP Product and Technology at BusinessBlocks

February 8th, 2015

Without

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/

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".

Jonathan Kroll Product Manager

February 11th, 2015

I have to agree with the "without" crowd - but for what its worth, especially if your scenario is unique, you may want to consider searching what others have done in your industry:  http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4801:n7heud.1.1