Forums: Discussions for entrepreneurs and small business.

Let`s say I pitch my idea [for a website] to VC firm and they discover that I don`t have a trademark on the domain name I own. Could they, or anyone really, obtain a trademark for my domain name, and then force me to give it to them? In this case, what takes precedence? Me purchasing the domain name first will full plans to use it, or them buying the trademark after?

-------------------------

I want to know, if I can live with what I know. And only that.

If you own a domain, they cannot force you to give it up. If a company already owns the trademark for a domain, they can buy it from you. Do you think a VC firm is going to invest in a domain name if it is not producing revenue, or you are planning to start a business producing revenue before approaching them?

I would be pretty sure it has to be done the other way.  They have to own the trademark before the website was created.  Otherwise, people could use that strategy to take over websites that do not have trademark protection with very little effort. 

-------------------------

Smart Capitalist | Coffee Shop Funding | Tyler Weaver Personal Blog

The way this normally comes up is the trademark exists first, and then someone registers a domain name that violates the trademark. In that case, the trademark holder can go to ICANN, the international registrar body, and force the transfer of the domain.

Your issue is whether they can do that where you have the domain before they have the trademark. I don`t think so, but I`m not sure. First, I don`t think they can get a trademark in the face of your prior use of the term in commerce (and you might want to put up at least a placeholder site to establish use; I`m not sure the registration alone gets it.) Second, I`m not sure if the ICANN cybersquatting rules apply where the domain registration preceded the trademark; I doubt it, but you will need to look that up on your own.

Either way, as a practical matter, no reputable VC firm is going to rush out and try to register a trademark like that. Real VCs are really busy people. They are sitting on top of a pile of money, and working really hard trying to find billion dollar possibilities to put it into, and trying to help those companies make it once the funds are invested. They don`t have time to steal your idea, even if they wanted to.

I wouldn`t go into the VC / Angel process assuming that they are out to steal your idea or your intellectual property. If that kind of negative thinking is uppermost in your mind, you will inevitably communicate to them, and the negativity will hurt you immeasurably in terms of getting a relationship going.

The key part of your scenario is you own the domain name which does not have a trademark. Because of that fact - that you own the domain and thus I presume were the FIRST to use the name publicly... you would have a leg up in either getting a trademark or defending against someone else applying for it.

~Roland

-------------------------

Web Design | Best Beef Jerky | ecommerce articles | Follow vwebworld on Twitter

Words of personal experience talking here...if you have a domain name, get a trademark on the company idea, name, logo, tagline, etc. because you CAN be forced to hand over a domain name if it infringes on someone else`s company. It will cost you a lot of money in the longrun. Be safe, always trademark or patent your ideas and names if you DON`T WANT TO LOSE THEM.

-------------------------

Albanese Consulting, Inc. Software Development & Technology Solutions toll free: 866-239-3400 www.albx.com

So many conflicting answers guys...Is there a consensus on this?

Sometimes?

-------------------------

Aaron Wood
CEO
San Diego Dream Weavers
http://www.sddreamweavers.com
awood@sddreamweavers.com

New and improved! Now with blogging goodness!
http://www.sddreamweavers.com/san-diego-seo-marketing-blog/

Don`t rush into trademarking anything, you might just spend a lot of money and do not have a return. People are right when they say that if a name was not trademarked with USPTS before you register the domain then you`re good. Otherwise you might end up in long lawsuits. Like Nissan Motors and Mr. Uzi Nissan. 

Well, yes. I didn`t see any conflicts in the responses.  HardKnocks has it best summarized.  Whomever used the trademark in commerce first is the presumptive owner.  Just registering the domain name is not using the name in commerce.  Putting up a web site teasing visitors about the type of site coming soon may be.

Fry`s Electronics is a very good study case for an example of how this happens in a real David v Goliath case.  Fry`s started out as a grocery chain in San Jose, CA.  No domain name.  They gradually added homebuilder components to an aisle in the store, and that multiplied into the Fry`s Electronics empire.  (There`s still a couple of Fry`s grocery stores somewhere).

In the same time frame, a small french-fry vendor registered the name "Frys.com", and he used the domain to advertise his business.  Fry`s was the trademark of Fry`s Electronics.  The empire demanded that the Fry vendor turn over the domain name as a trademark issue.  The small fry (hi) said "no" and Fry`s sued.  And lost.  And appealed.  And lost again.

In the end, Fry`s Electronics did what they should have done in the first place.  Specifically, they made a cash offer for the domain name that the small vendor couldn`t pass up.

So in your case, it`s all in the timing.  If the name is not trademarked, then why don`t you just do it yourself?



-------------------------

Steve Mann
Internet Videographer
MannMade Digital Video
My Email