Q re trademarking a domain.....

[goldnugget]

More to the point...I have thought up a registerable 2 word domain in a desirable industry sector and thought it may be good to trademark the word combination for the domain with IPAus for branding purposes. The .com.au and .net.au are available for hand reg, the TLD's are owned by the same person but for sale as well (1 parked (.net), the other no site(.com)).

The Question is this.....can I apply (and be granted) a trademark in a protected or licenced industry category to complement the domain without being licenced in the industry as an actual operator.

The domain in question is in the insurance sector, though I'm not in the industry myself obviously the potential future of the domain would be geared for that industry and I dont want an existing insurance company trademarking the 2 word term (not trademarked at the moment) and taking advantage of my creative genius catchphrase to go with it (okay...that bit is questionable.....even by me ).

Can I apply for trademark or not?.....obviously the trademark would be a part of the domain package if picked up by an end user.

Thoughts and Facts greatly appreciated on this matter.

(cost wise from what I saw...online application for simple TM is around $130 and registration if cleared and approved around $300)

Cheers Jay

 

[Cooper Mills DomainLawyer]

More to the point...I have thought up a registerable 2 word domain in a desirable industry sector and thought it may be good to trademark the word combination for the domain with IPAus for branding purposes. The .com.au and .net.au are available for hand reg, the TLD's are owned by the same person but for sale as well (1 parked (.net), the other no site(.com)).

The Question is this.....can I apply (and be granted) a trademark in a protected or licenced industry category to complement the domain without being licenced in the industry as an actual operator.

The domain in question is in the insurance sector, though I'm not in the industry myself obviously the potential future of the domain would be geared for that industry and I dont want an existing insurance company trademarking the 2 word term (not trademarked at the moment) and taking advantage of my creative genius catchphrase to go with it (okay...that bit is questionable.....even by me ).

Can I apply for trademark or not?.....obviously the trademark would be a part of the domain package if picked up by an end user.

Thoughts and Facts greatly appreciated on this matter.

(cost wise from what I saw...online application for simple TM is around $130 and registration if cleared and approved around $300)

Cheers Jay

Hi Jay

On the basis of what you say you can register the trademark in theory (lets assume the phrase you want to trade mark is not descriptive, but is inherently adapted to distinguish your services from others in the industry).

The problem you will have is that unless you can actually use the phrase to provide the services (which from what you say means you need an AFSL), you may find that someone else may file a non use application to remove your trademark from the register (there are of course some restrictions) but definitely something for you to think about.

If you are serious about pursuing this then you are best to engage an experienced trademarks lawyer.

 

[goldnugget]

The problem you will have is that unless you can actually use the phrase to provide the services (which from what you say means you need an AFSL), you may find that someone else may file a non use application to remove your trademark from the register (there are of course some restrictions) but definitely something for you to think about.

Thanks for that.....maybe a way to 'work it' could be by way of a 'site under development' banner for the domain (or something similar).

What started out as a general domain search project is turning into a marketing and brand development project.

Maybe it could buy enough time to see how best to approach it....I guess initially I would categorise the trademark under IT services/marketing (or similar) which wouldnt require registration.

Cheers

 

[snoopy]

Can I apply for trademark or not?.....obviously the trademark would be a part of the domain package if picked up by an end user.

It is not going to add any value & if you start doing this with names it is going to blow holding costs right out.

 

[goldnugget]

It is not going to add any value & if you start doing this with names it is going to blow holding costs right out.

I understand Snoopy. I guess the angle I am looking at is that if an established company trademarked it even after the domain has gone public then they could consider themselves in a position to push me around with their financial muscle as a cybersquater etc where as if I had a trademark as well as the domain then they cant.

On the other hand if I have the domain and they register a trademark then any potential value of the domain would go down the tube too for the same reason as above.

 

[snoopy]

I understand Snoopy. I guess the angle I am looking at is that if an established company trademarked it even after the domain has gone public then they could consider themselves in a position to push me around with their financial muscle as a cybersquater etc where as if I had a trademark as well as the domain then they cant.

On the other hand if I have the domain and they register a trademark then any potential value of the domain would go down the tube too for the same reason as above.

You are probably thinking way too much about this. All spending money on trademarks will do is ensure your costs are so high that you won't make money.

 

[Rhythm]

TMs are ok if it's for a few domains, expensive with many names.

 

[goldnugget]

You are probably thinking way too much about this

I tend to do that....one of my built in restrictions unfortunately.

This could be a once only opportunity if I can work through the details.

For the cost of the trademark application and if approved the cost of registration might be worthwhile in this case till I can evaluate the legalities, structure and model. Then I'll see where it stands before looking at bigger outlays and actual development (or resale) opportunity.

I'm not in a rush with it at the moment, theres other quicker cheaper domain opportunities to work on in the meantime so just gathering intell.

Thanks

 

[Shane]

It seems like a lot of stuffing around to me.

I own a couple of trademarks, but they're more about protecting my established businesses rather than defending the domain registrations.

Knowing the insurance domain space pretty well, every possible crappy domain has already been registered in com.au and net.au.

Have you stumbled upon a hidden gem that the rest of us have missed? Or are you potentially going to waste a heap of time and money going down this path...?

 

[snoopy]

I tend to do that....one of my built in restrictions unfortunately.

This could be a once only opportunity if I can work through the details.

For the cost of the trademark application and if approved the cost of registration might be worthwhile in this case till I can evaluate the legalities, structure and model. Then I'll see where it stands before looking at bigger outlays and actual development (or resale) opportunity.

I'm not in a rush with it at the moment, theres other quicker cheaper domain opportunities to work on in the meantime so just gathering intell.

Thanks

Here is how I see it,

From a resale perspective:

A normal reg might cost $10 a year. Lets assume you have 1:100 chance of selling it each year for $1000. In that case it is a borderline name. Now consider the same with a cost of $10 a year & has a $500 initial outlay. I don't think the probability of sale will change, but it becomes an almost certain money loser.

From a development perspective:

If you aren't going to develop it "right now" forget about trademarks. Even if you were I'd forget about it until it is a substantial business. If it were generating hundreds of thousands a year in sales I'd be thinking about trademarks.

 

[goldnugget]

Have you stumbled upon a hidden gem that the rest of us have missed? Or are you potentially going to waste a heap of time and money going down this path...?

As far as domain value goes....I think its more going to be a case of developing it if I can which is where the trademark would come into play and coexist with that. As a standalone domain for the sake of flipping it on search results alone probably wouldnt have much value.

Thinking along the lines of say Choosi.....the brand itself is now recognised as an insurance portal to several insurers but prior to publicising it there would have been zero searches for choosi. I was hoping I could develop it as something similar in the sense of having the comaprison of benefits between providors and quotes, but I guess because they are paid for referals then they are required to be registered (which they are) so this is something I'll have to look into more, but unlike choosi, I do have the word 'insure' in the domain.

It wasnt my intention to follow this path when I was checking domains but I guess with Uni on holidays and watching every second ad on tv flogging insurance during the day....none of them made me feel compelled to make insurance enquiries, none of them stood out and out of all the insurers advertising, I couldnt even tell you who was selling what.

Like I mentioned, I dont have the resources right now to bring something to market, but if/when I can then with a bit of luck it could pay off.

In the meantime while sussing out more of whats involved I wouldnt have to rush out and reg the trademark so that will buy a bit of time.

Gotta go...helping people move sux