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| Salt Lake City patent attorney, Tyler R. Goucher, provides intellectual property attorney services including patent application, patent filing, guidance on the patent application process, trademark applications trademark name searches and copyright services to clients in Utah with clients located from Ogden to Provo including Layton and Park City. As a patent Lawyer licensed with the United States patent and Trademark Office, Mr. Goucher is also available to assist inventors with their inventions throughout the United States. |
Tyler R. Goucher
Salt Lake City Patent Attorney
Salt Lake City Patent Attorney
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website or by sending us an e-mail. Legal issues are highly factual in nature and advice given must relate to the specific facts of a case.
Therefore, we recommend that you seek an attorney qualified to render an opinion on your situation.
website or by sending us an e-mail. Legal issues are highly factual in nature and advice given must relate to the specific facts of a case.
Therefore, we recommend that you seek an attorney qualified to render an opinion on your situation.
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| Tyler R. Goucher Patent Lawyer 8 East Broadway, Ste 600 Salt Lake City, Utah 84111 Phone: (801) 326-4554 Fax: (866) 285-2421 tyler@kmiplaw.com |
Trademark Searching, Domain Name vs. Trademark, Intent to Use Trademark application
Questions: How can I find out if I can use a particular name for my business or not? Does it matter if someone in
another state/country/etc. has this same business name, even if it is in another field?
If a domain name is available does this mean that the trademark or BUSINESS (brick & mortar site) name is also
available?
If it is available and I want to hold on the name (both website domain name & name for physical building storefront) until I
am ready to build the website and open the storefront business, can I buy it and have it sealed so that it will be available
only for my usage in the near future?
Answers: To find out whether a name is available for appropriation, I would suggest hiring an attorney to conduct a
name availability search and opinion. Trademark searching is difficult and best left to people who do a lot of it and have
access to the proper databases. Alternatively, you may wish to conduct the name availability search yourself on the
USPTO’s website. The USPTO provides some general guidelines for searching here: http://www.uspto.
gov/web/offices/ac/ido/ptdl/tmsearch.html. This search will only give you federally registered trademark results. You
would then need to search registrations in each state. For a general understanding of trademark law, I would also
suggest checking out: http://www.uspto.gov/web/offices/tac/doc/basic/.
To answer your second question, a company that is using the name you want for the same service or good in another
geographic area can stop you from using the name if they have registered the name with the USPTO. However, if they
are using the name for a different service or good or have not registered the mark with the USPTO you might be able to
use the name also. This is a highly fact specific inquiry which should be addressed by an attorney after looking into all
of the facts surrounding the registrations.
In regard to whether an available domain name means that the name in question is available for the business or brick &
mortar site, the answer is no. Domain names and trademarks are not the same thing. Registration of a trademark with a
state or the USPTO is entirely different than registration of a domain name with ICANN. Anyone who pays the fee can
register a domain name. Therefore, just because a domain name is available does not necessarily mean that the name
is available.
Finally, with regard to you last question, you can hold the website domain name by purchasing it from any of the
numerous websites offering this service. However, if the site infringes on another companies trademark, you may be
required to give them the domain. Similarly, you can file an “intent to use” application with the USPTO before you
actually use the mark. There are some restrictions and you should carefully consult the Trademark Manual of Examining
Procedure. Improperly filing an “intent to use” trademark application may result in the USPTO refusing to register your
mark.
Questions: How can I find out if I can use a particular name for my business or not? Does it matter if someone in
another state/country/etc. has this same business name, even if it is in another field?
If a domain name is available does this mean that the trademark or BUSINESS (brick & mortar site) name is also
available?
If it is available and I want to hold on the name (both website domain name & name for physical building storefront) until I
am ready to build the website and open the storefront business, can I buy it and have it sealed so that it will be available
only for my usage in the near future?
Answers: To find out whether a name is available for appropriation, I would suggest hiring an attorney to conduct a
name availability search and opinion. Trademark searching is difficult and best left to people who do a lot of it and have
access to the proper databases. Alternatively, you may wish to conduct the name availability search yourself on the
USPTO’s website. The USPTO provides some general guidelines for searching here: http://www.uspto.
gov/web/offices/ac/ido/ptdl/tmsearch.html. This search will only give you federally registered trademark results. You
would then need to search registrations in each state. For a general understanding of trademark law, I would also
suggest checking out: http://www.uspto.gov/web/offices/tac/doc/basic/.
To answer your second question, a company that is using the name you want for the same service or good in another
geographic area can stop you from using the name if they have registered the name with the USPTO. However, if they
are using the name for a different service or good or have not registered the mark with the USPTO you might be able to
use the name also. This is a highly fact specific inquiry which should be addressed by an attorney after looking into all
of the facts surrounding the registrations.
In regard to whether an available domain name means that the name in question is available for the business or brick &
mortar site, the answer is no. Domain names and trademarks are not the same thing. Registration of a trademark with a
state or the USPTO is entirely different than registration of a domain name with ICANN. Anyone who pays the fee can
register a domain name. Therefore, just because a domain name is available does not necessarily mean that the name
is available.
Finally, with regard to you last question, you can hold the website domain name by purchasing it from any of the
numerous websites offering this service. However, if the site infringes on another companies trademark, you may be
required to give them the domain. Similarly, you can file an “intent to use” application with the USPTO before you
actually use the mark. There are some restrictions and you should carefully consult the Trademark Manual of Examining
Procedure. Improperly filing an “intent to use” trademark application may result in the USPTO refusing to register your
mark.