Let’s say that you have figured out a great domain name, checked for availability and to your amazement, no one has purchased it yet!
After finding this needle in the haystack, you have dreams of the next hot Internet business or the virtual millions that you are going to make by monetizing this property! Then you suddenly remember the last time you were served with a cease and desist letter, and an unhealthy depression sets in.
Suddenly your dreams are being flushed down the toilet, because you realize you don’t possess a trademark of any sort.
Well, don’t lose hope just yet; here are some things that the USPTO says that you can legally trademark:
Any names, like your company names or say a product name, or any images, symbols, logos, slogans, phrases, unique colors, product design and packaging (trade dress) and finally: domain names! (if they label a product or service.) Depression is now gone and the sky is the limit; you are back in business!
So now you are set and you can get on with registering your name, registering your trademark and begin suing the pants off anyone who has a mark similar or just like yours, right? Well, not so fast.
There are many limits to trademarking; one such limit is a situation called fair use.
In 2006, a Disney movie titled “Wild Hogs” was released and promptly triggered a lawsuit by the Hell’s Angels MC.
They were offended by the biker images used as being a derivative of obvious Hells Angel’s imagery. So far, it appears the fair use limitation will prevent this suit.
Read the CNN report about this issue here: http://money.cnn.com/2006/03/09/news/funny/hells_angels/index.htm?section=money_latest .
I would say to the Hells Angel’s MC, that CNN may think this is “funny” news, but I most certainly do not, just so we are clear on that point… moving on…
Having said that, fair use does NOT apply in cases where you are using a trademarked term in your newly conceived name for trademark.
A rudimentary search of trademark applications pending, will reveal that many people believe that they can use names similar to “Joe’s ebay shoe shop” or “Country cottage on ebay” and unfortunately this is where fair use ends; You cannot trademark names formatted like this.
Leave ebay out of it and you might have a fighting chance. Make sure though, that the name is not too generic or fair use will be back in the picture. Having worked that out, there are other limits to trademarking that you need to be aware of.
Some of the limits include: Parody Use, Non-commercial Use, Product Comparison and News Reporting, Geographic Limitations, and Non-competing or Non-confusing Use. Before settling on your new name, consider the following case:
Recently in United States federal court, an appeal to vacate the Washington Redskins trademark was once again overturned and the right to use the name “Redskins” by the sports collective was preserved.
This trademark has been removed, then re-granted in a decades long debate. You can read the details here: http://www.cnn.com/2009/CRIME/11/16/scotus.redskins/.
If none of the following applies to you and it seems like your name is a winner, then you need to go to the United States Patent and Trademark Office website and complete the relevant application.
The procedure is not really complicated, on the contrary it is fairly straight-forward. The form is generally image -driven and focuses on symbols more than words, but that doesn’t matter.
Simply list the effective date when you began utilizing the particular trademark, select the classification, choose a subcategory which applies to your company then finally choose the one which suits your uses best.
You need the actual picture and information regarding how you will use the brand. The application will be $325, but keep in mind, not all trademarks will be accepted.
After submission, it goes through the review and qualification process where if its initially approved, it will be placed in the Official Gazette area on the Internet site, allowing those concerned to dispute your trademark.
If you are fortunate and no protests are filed, then the process will be completed within one year’s time. Get comfortable with waiting. Note that if you do not hear anything about your application and one year has passed, you should contact the Patent and Trademark Office, because a lawyer may be necessary.
I hope you find this helpful and should you require further assistance, look here: http://www.uspto.gov/web/trademarks/workflow/start.htm
Have a question and need quick answers? 
