Include a TM When You Buy a Domain Name
Neustar Domain Names

Include a Trademark When You Buy a Domain Name

28

A friend in the business told me about an exceptional domain name he had just acquired, and as we were discussing potential buyers, he noticed that the company had an abandoned trademark for the domain name. It was the exact .com trademark, and had it been live, it might have made a nice extra piece of intellectual property to include with a subsequent sale.

I hadn’t really thought about doing this before my conversation, but when you are buying a domain name from someone who has owned it for a while, it might behoove you to do a trademark search at the USPTO to see if that person happens to have a trademark. If there is an active trademark, be sure to include it in the deal.

One reason this is a good idea is so that you can include it if you resell the domain name. Perhaps a future buyer will value the trademark, and having that could be an extra purchase incentive. It can also be used as a negotiating tool to help seal the deal.

Another reason that this trademark search is a good idea is that it will help you see if there are other trademarks that may come into play with your ownership of the domain name (not including a trademark involving the domain name). It’s always a good idea to see what marks are there to help you avoid infringing on the intellectual property of a trademark owner. I like to use the Apple example because there are ways a person could use Apple.com if Apple didn’t own it, although they couldn’t infringe on Apple’s many trademarks.

A final reason (which may or may not be valid) is that there is the potential to get sued by the trademark owner on an exact match domain name trademark. Let’s say you bought A.com and the owner keeps the A.com trademark. Perhaps down the road he will sell his company and the buyer will try to use the trademark to put a claim on the domain name. Again, I am not an expert in law, so this might not be a valid argument, but it’s something to think about.

The next time you buy an aged domain name from a seller who has had it for a while, check to see if there is a trademark for that domain name, and if there is, make sure it’s included in the deal. I can’t see a downside to owning a related trademark, and a thirty second USPTO search can help you find out if there is a mark on it.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


Reach out to Elliot: Twitter | | Facebook | Email

Comments (28)

    jackolantern

    tm all you want but you cannot trademark generic names idiot. the tm agent will tell you that when they examine the application

    September 8th, 2013 at 11:18 am

      Elliot Silver

      Really? Seems like Hotels.com has plenty of them http://www.trademarkia.com/trademarks-search.aspx?tn=Hotels.com

      As far as I am aware, the TM on my friend’s name had been live before a former owner ceased using it. I don’t know what type of trademark it is/was.

      On a sidenote, what kind of intelligent person writes a jerky comment like that? Sometimes I feel badly that a person can wake up in such a bad mood on a Sunday morning that they need to be a complete asshole to someone they don’t even know. Whether I am right or wrong, your comment reflects poorly on whomever you are.

      September 8th, 2013 at 1:12 pm

      Mark

      @jackolantern – You are idiot, not Elliot. You now zilch about registered trademarks. Yes, you can trademark pretty much everything, but you need to know how.

      September 8th, 2013 at 1:29 pm

      steve rosenfeld

      you referring to hotels.com useless design tm’s what in the hell does that have to do with domain names? I understand you have to post something to this useless website but as you stated ” I am not an expert in law, so this might not be a valid argument” enough said. P.S the Yankees are going to kick your ass. fr Bronx NY . to my fav seltzer drinker Elliot. plus there are hundreds of goods and services to choose from so tm doesn’t amount to squat. hotels.com is an insecure company because (priceline.com which is an enforceable tm and expedia.com are eating their lunch)hotels.com might as well be motels.com with a roach mascot.

      September 8th, 2013 at 2:17 pm

      Elliot Silver

      Why are you posting under a different handle now to try and make people think you’re two different people? You’re using the same IP as jackolantern.

      That aside… LOL about the Yankees. They will be lucky to still have a chance at the wild card in a week. I hope they are still in it next week because I’ll be at the game on Sunday. Wouldn’t it be sweet if Mariano blew another save in his last game at Fenway and that was what eliminated the Yankees? I think so.

      Regardless of the type of TM, I would want to buy the trademark if I was buying the matching domain name. I assume the seller wouldn’t have a need for it anymore, and owning the additional intellectual property can only be helpful with no downside.

      If you were really an expert on the topic of IP / TM, you’d post using your real name, and you certainly wouldn’t try to fool people by posting under different user names.

      September 8th, 2013 at 2:37 pm

      George

      As far I’m concerned, you’re the only Idiot with no class at all around here.

      September 8th, 2013 at 7:47 pm

      Elliot Silver

      Thanks for the support… I have no issue with people disagreeing with me or correcting something I wrote that is inaccurate, but I don’t appreciate jerky comments that serve no purpose.

      September 8th, 2013 at 7:51 pm

    Brad Neilson

    Interesting article.

    I have been buying and selling high quality domain names for over a decade, and have accumulated a decent collection. If you think about it when someone invests in an unused domain they are really investing in a potential future brand. On some occasions, after purchasing a domain, I have been contacted by trademark holders about a brand that unknown to me had already been started with the purchase of a trademark.

    What I have decided to do is take some of my best domain brands and have them registered as a trademark. The process for purchasing a domain name was what originally scared me since it can get quite complex however I did find a company http://www.VancouverTrademark.com that has automated the trademark registration process online and has the best pricing. Pretty much you fill out a form online (5 minutes) and a lawyer will call you via phone once the process is finalized. No setting up expensive meetings unless you request this also. What I like about them is that they have a good understanding of domains and they do comprehensive protection in the US and Canada which covers North America. They also have trademark lawyers doing the process rather than trademark agents which may not give you the same level of comprehensive service.

    September 8th, 2013 at 12:59 pm

    Jonathan

    The fact that it was abandoned is often a sign that the owner realised the TM would not be appoved & “abandoned” the application.

    September 8th, 2013 at 1:03 pm

    Brad Neilson

    One other note.

    With a trademark I found that the domain (brand) was easier to sell when I approached a potential buyer telling him that I had a trademark for sale along with the best .com domain. Another tip I do is sometimes I find that if I have a professional looking logo graphic done for the domain this also helps the buyer visualise the value. For some reason this combination works better at catching their attention and also opening up their wallet to the true value of the brand even though as we all know the domain, in my opinion, holds the highest value. Without it the trademark is useless also unless the trademark was purchased before domain registration.

    September 8th, 2013 at 1:06 pm

    Mark

    Registered trademark matching domain name or it’s second-level part (without extension) is also sing of bona fide, which is a strong shield against potential UDRP attempts.

    September 8th, 2013 at 1:31 pm

    Steve

    Ugh. So much risky TM conjecture and supposition.

    As Elliot’s said numerous times over the years, you need to work with a TM/Intellectual Property attorney if you’re doing — or want to do — anything in this arena. Far more complex than it seems on the surface.

    Curiously, I sold a .com some years back where the corporate buyer included as a condition of the sale that I actually cancel the trademark application I had pending at the time.

    Go figure.

    September 8th, 2013 at 7:58 pm

    Puneet

    Jackolantern – u r a big jackass and donkey. Talk properly.
    U r a big idiot. Do u hv any blog where you shares even little bit of information free of cost to new ppl.

    September 8th, 2013 at 8:48 pm

    Josh

    I have had a chance a couple times to get the rights to the TM as well.

    Is it worth it to add to a name to sell, no but if it doesn’t cost you anything to get it or the rights to it included, why not.

    Will the name sell for more or faster, probably not, with or without a TM on the name, it moves.

    September 8th, 2013 at 10:20 pm

    pb

    On the other hand – if you do own a domain AND a trademark, be sure to mention it to the potential buyer. I know of a case where the domain name was listed on auction and there was a party interested in buying it for a decent sum, but backed off after checking that the seller had an exact-match trademark that they didn’t include in the deal. Result was a much lower final bid.

    September 9th, 2013 at 6:46 am

    Josh

    That could be due to cost, TM’s are not free and if a seller feels they are getting just enough to be satisfied to star with they usually avoid adding free $XXXX bonuses.

    That is why mentioned if when buying it is included and what is perceived at no additional cost, great. Otherwise paying any premium for one is not a profitable plan imo as a domain reseller.

    September 9th, 2013 at 7:58 am

    Paul Keating

    Elliot,

    Sound advice for a number of reasons, the lest of which is the re-sale. When buying domains for clients (and personally) I use a Bill of Sale which assigns any and all tm rights held by the seller, including GOODWILL. Even if they have no registered TM, the purchase of the Goodwill will permit you to apply for a tm with a first use date as far back as the seller’s use.

    In registering, it is easy to register for a SIC class pertaining to PPC even for a generic. The best single protection this provides is against some idiot who files a UDRP. It then sets up a powerful sale opportunity to the complainant. It has never failed yet. The only issue is measuring the cost of registration as a function of the domain value to see if it is overall worth your while.

    You do NOT need a fancy IP attorney to do this (although I am one of those). Your goal is not to corner the market but rather protection and there is really no reason why, with a bit of early-one assistance perhaps from a TM attorney, you cannot do this yourself.

    Paul

    September 9th, 2013 at 8:14 am

    Easy Names

    @Jacko
    Are you that naive ??
    This one is for you .. http://www.tomsguide.com/us/Russia-Emoticon-Patent,news-3147.html

    September 9th, 2013 at 10:05 am

    Domo Sapiens

    When buying IP assets(domains or TM rights)is there any way to be sure you are dealing with the person that has the rights/ownership to sell such…?

    Having someone’s name in the whois as the administrator doesn’t provide any assurances of dealing with the right person…right?

    September 9th, 2013 at 10:26 am

    Eddie

    This is a good idea BUT a trademark is only valid if it’s actively being used for a business. So if you bought a domain name http://www.schooltime.com and the name “School Time” was a registered trademark in the clothing/apparel space. Then you would need to be actively be producing/selling something/clothing under that trademark. This works better for buying selling websites that include the domain name rather than domain names that are no longer in the business that they have the trademark for.

    September 9th, 2013 at 1:24 pm

      Elliot Silver

      Good point. I assume someone could put up a temporary website or do something to ensure the trademarks stay active.

      September 9th, 2013 at 1:25 pm

      paul

      Sorry but you are missing the point of trademarks.

      On cannotnhave a tm for “school uniforms” to.sell school uniforms. That would be rejected and any common law claim would be invalid.

      However you could have the same tm for “providing information and advertising links using a database in an online platform” or words to that effect. This is nothing more than PPC or online advertising. It is a safe bet that the prior owner of the domain portrayed advertising and used some sort of database in the process. And of course you would be using it in a similar fashion.

      Paul

      September 9th, 2013 at 2:39 pm

      Eddie

      I think you’re correct in most cases but Richard Branson was able to trademark “Virgin” and he owns the word in all categories ie virginbeer, virginclothing, virgintv, virginairlines…virgineverything.

      I personally have trademarked a generic two word catch phrase in all categories and I’ve been able to create a brand which greatly increased the value of my domain name.

      September 9th, 2013 at 3:24 pm

      DaveZ

      In any case, the points are that: a) one can’t use a generic word/phrase as a trademark in its generic or descriptive sense (i.e. Apple for fruit), and b) one can still use it in a distinctive manner or outside its descriptive meaning (i.e. Apple for electronics). Dunno if that’s what jackolantern meant to say, albeit the idiot remark is totally unnecessary.

      September 9th, 2013 at 8:47 pm

    unknowndomainer

    I like that domainers are always stating how much they respect Trademarks and don’t “squat” but here we are in 2013 and now we have a post suggesting you check trademarks before buying a “exceptional domain”.

    What were you doing before?

    Hoping and praying you didn’t trample on someone’s IP?

    September 10th, 2013 at 3:40 am

      Elliot Silver

      That’s a great point. People (myself included) should really check for trademarks before buying names to ensure that no trademarks will be violated.

      That said, I only buy descriptive domain names, so generally speaking, I should always be allowed to use them without trouble in the generic manner. Again with my Apple example from above, I could use Apple.com to sell fresh apples and apple sauce, but I wouldn’t be able to use it to sell computers, phones, apps…etc.

      Before I bought it, I should have trademark search for Drafting.com, because if there is/was IP owned by the domain seller, even if it didn’t “protect” my domain asset, it could have potentially helped with its value upon resale.

      Thanks for the excellent question and good point.

      September 10th, 2013 at 7:33 am

      Unknowndomainer

      Yes, generally speaking it is more about protecting and undersanding your investment than anything.

      I dont know why I woke up on the negative side of the bed yesterday.

      September 10th, 2013 at 3:35 pm

    Eddie

    I was reading in a book called “Brand Name Bullies” that the guy who owned crew.com lost his domain name when ICANN’s domain-name dispute resolution team found him in violation of J.Crews trademark even though his site had nothing to do with clothing.

    I think most generic names are safe but not always and I think trademarking a high level generic name would be a great idea. I know for example that I can’t trademark Corn if I owned Corn.com but I could trademark Corn Trader™ and I think that would add a layer of protection to the name and also increase the value.

    Eddie

    September 10th, 2013 at 9:50 pm

Leave a Reply

Name *

Mail *

Website