Thread: Trademark Myths

We've already discussed domain myths and SEO myths. Today, I came across DomainsDir.com which talks trademark myths.

Domain Name VS Trademark Myth #1: If I own a trademark I need to register my trademarked name in every TLD. Pure Myth and a worthless, time-consuming strategy promoted by Intellectual Property Lawyers who need to justify what you are paying them.

I agree, it's not necessary and it would be expensive to do this! I think it's more important for the trademark owner to concentrate on registering the .com and the cctlds of countries where it intends to market its product/service. If applicable, perhaps also register defensive domains (such as common typos). The trademark owner will be able to win domains that infringe on its trademark via arbitration proceedings.

Domain Name VS Trademark Myth #2: When you register a trademark, you have to choose a classification for that trademark such as "entertainment television", "clothing and apparel", "beverages", etc.

You do not own the phrase you trademark. You are being allowed to use that trademark in commerce within the classification you chose. Someone else can register the same exact trademark and choose a different classification.

In addition to that, the geographical area you registered your mark in only covers that area. Someone could have the same trademark in the same classification in a different geographical location.

Yes, I agree that the trademark is usally limited to such classification and area. However, there is an important exception: well-known trademarks get extra protection.

Domain Name VS Trademark Myth #3: If you chose the trademark, "goofball lawyer stuff" and chose the classification "clothing and apparel", I could still register the domain name http:// goofballlawyerstuff.com or net or org or whatever.

As long as I do not sell clothing or apparel, link to anyone who sells clothing and apparel, or try to confuse people into believing my website is owned by you, I have not violated your trademark rights. Get over it.

Yes but, again, there's the exception with regard to well-known trademarks (ie trademark infringement of well-known marks can incur even if different good/services are being used by the third party).

Do you know any other trademark myths that you can share with us?