So, I bought www.mcdonaldsrocks.com... What's the big deal?

So, you've got this stellar idea.

You've seen this URL at the domain registrar that is similar to a national brand and you think, "I've got to have that! I'll put up a site about how much I love their product!"

So, you register it. You start talking to your buddy about it and he says, "You can't register that domain name. It's got a trademark in it. You're in big trouble, man." So, who's right?

Yum!  You know what this needs... Bacon!

Let's assume, for the purposes of this argument that you've registered, mcdonaldsforum.com. Your name isn't McDonald or anything like that. In fact, you own a small burger joint in Toledo where folks can order online to have the burgers shipped anywhere in the world.

You want to put up a forum that talks about McDonald's. You're planning to put some links to your site, but it'll be mostly to talk about McDonald's.

If you asked me for advice, this is the conversation that we'd have...

How to lose your trademark.

You go through the entire arduous trademark process, you've been granted the trademark and you've received your pretty little certificate in the mail. You're all done but the framing, right?

Well, yes....

And no.

Business is all about juggling.  I hate to add
another item to the already crowded
"to do" list, but it's no fun to get it wrong...
 

For now, you've got nothing to do but to enjoy being a trademark holder. You need to defend your mark to keep it strong, but assuming that no one tries to infringe your mark, you're golden.

So what the heck am I talking about?

I'm talking about the requirements of Sections 8, 9 and 15 of the Trademark Act.

Did your brain just screech to a halt?

Wait a second! Don't hyperventilate.

I know you don't know what I'm talking about. I'm about to explain... Sheesh!

Do I HAVE to register my trademark?

It has come to my attention that seemingly a lot of trademark lawyers have been telling their clients that they "have" to register their trademark to protect it.  That drives me nuts. 

I can't stand when people tell half truths.  All the fine print garbage makes me crazy.  I'm a full disclosure kind of girl. 

I'm not going to say that federal registration of your trademark is not a good idea.  Of course, federal registration is certainly helpful in protecting your mark.

But is it necessary?

The answer may surprise you, but it's not necessary to register your trademark with the United States Patent and Trademark Office (USPTO) to protect your mark against infringement.

Under U.S. law, you gain trademark protection once you have used the mark "in commerce". This is often referred to as a common law trademark.

You can use the "TM" indication (or "SM" for a service mark) after your mark at any time after beginning to use it in commerce (though you can only use the ® mark once you have a registered mark with the USPTO).

So, why do people register their marks with the USPTO?

How Strong is Your Trademark?

A trademark is a trademark is a trademark.  Right?

Actually, no.

Everyone loves the day
when they can start using the
registered trademark symbol after
their newly registered mark.

Some trademarks are better than others.  Ok, well, not better... But certainly stronger and easier to register and defend....

There are five classifications of marks (four of which can be registered with the USPTO). (Actually, Famous marks are given extra protection, but let's assume that if you're starting out, you don't have one of those.)

They are (in order of strength):