What comes first; my URL or my trademark?

Just because you can get a website address (a URL, uniform resource locator) for your business name, it doesn’t mean you can get a trademark for that name.  And just because you can get a trademark for your name, it doesn’t mean you can get the URL.  So what should you do first?

This is what I’ve done.  I researched available URLs for my business name, and if one was available, even if I didn’t know for sure I would use it, I bought it immediately for $12/year using one of the domain registration services.   Why?  Because in the past, I’ve done the URL search, found the URL available, then gone back the next day to buy it only to find a troll had scooped me and wanted 5K to sell it to me!  Now, if the URL I want is not available, sometimes I can buy it from the owner, but they often want a lot of money.

Once I know what URL I want to use, I have a trademark search done by a trademark attorney.  I do this BEFORE I do any marketing or branding using the name or buying an expensive URL.

I use an experienced trademark attorney to conduct my search for a few reasons:

  1. They can issue an opinion on whether my name is too close to a name that is already trademarked.  There are a lot of rules the United States Patent and Trademark Office (USPTO) uses to determine uniqueness and in ultimately granting a trademark.  It’s not as simple as searching the USPTO trademark database and not finding the exact name there already trademarked by someone else.
  2. If I decide to move forward with the trademark application, they know what the best classifications are to file my specific trademark in.  There are many trademark classes and it costs money to file in each one so I want to be sure I’m picking the right one (or ones).  It can also be confusing which class I should use.  They can help with that.
  3. When it comes time to file a trademark application, I know they’ll get the paperwork right and I don’t have to figure it all out myself.  They can also help me through the process of getting the trademark granted by communicating with the USPTO for me.  It’s an application, like any other type of application, and there’s a whole process to go through to get to the end point where I have my trademark.
  4. Once I have the trademark, they can provide me with a trademark watch service to see if anyone else is using it.  If so, they can send a ‘cease and desist’ letter to make that person stop.  If they won’t stop, the trademark attorney can escalate with more legal action.

Why go through all of this and spend all this money?  My trademark and my brand are vital to my business.  I spend a lot of time and money on marketing and I don’t want someone else to steal that from me by stealing my name.

A trademark gives me recourse in the court system to protect my intellectual property, but many times it only takes an attorney sending a cease and desist letter to stop the thieves.  A good trademark attorney will work with me to find budget friendly solutions.