This morning, I wrote about Univision’s acquisition of the TUDN.com domain name. One thing I noticed just now is that Univision had filed for a trademark on TUDN in October of 2018. I think it is a good idea to look at trademark filings before negotiating the sale of a domain name. There are probably more than just a couple of reasons to look for a trademark before negotiating the sale of a domain name, but I will share two:
#1) Many domain name buyers, especially on platforms like Sedo and Afternic, like to purchase domain names stealthily. This is especially the case when the buyer is wealthy or is a large company and doesn’t want the registrant to know. When I am negotiating the sale of a domain name and I can’t identify a buyer, searching for a trademark filing may reveal who is inquiring about a domain name. If I noticed a trademark was filed for a particular keyword before the inquiry, I may be able to determine who is inquiring to buy it. The trademark may also provide additional insight about what is planned and consequently how important the domain name will be to that prospect. This information can provide me with leverage.
#2) Knowing what companies have active trademarks can also be helpful to me when negotiating the sale of a domain name. If only one company has a trademark or application, my sale options may be more limited than if there were many trademarks from different companies. For instance, if a major company was going to create a very unique brand name and I had the exact match domain name, it would be unlikely another company would use the same brand name, leaving me with fewer sale options. Knowing the trademark status of keywords can also help me determine if there is any risk with negotiating a sale.
There are two resources I use to look at trademarks: the USPTO (Tess) and Trademarkia. I find Trademarkia very easy to use, although it is probably the same information that is from the USPTO. Notably, other countries have their own trademark databases and regulations, so depending on the domain name, it could be beneficial to search other trademark databases as well.
Typically, I look at trademarks before buying a domain name. I think it is important to understand how a domain name can and can not be used and who might believe they have a legal right to a domain name I want to buy. New trademarks are applied for regularly, so I try to keep a lookout for trademarks related to the keywords in domain names my company owns. In addition, I try to look at trademarks before engaging with a prospective buyer to see if I can learn anything about why my domain name is desired.
Elliot – Why do you prefer trademarkia.com over trademark247.com ?
Elliot – Why do you prefer trademarkia.com over trademark247.com ?
I haven’t used the other one before but will check it out.
Great insights, Elliot.
Very few domain investors are savvy enough to see the importance of a proper trademark search before getting into domain name sale negotiations.
You’re absolutely right. Sometimes, a registered trademark turns the domain name into a market of one: it can only be sold to the trademark owner, since it can easily be forced out of any other buyer’s hands using the UDRP.
Same goes into figuring out the identity of those who might suddenly be interested in acquiring your domain name—and why.
TESS and Trademarkia are good starting points for trademark research into domain name sales, but are not something I’d rely on for trademarking purposes. After all, the problem with DIY trademark searches is that you need to know what to search for and how to interpret search results.
Trademarkia only checks identical matches hoping that you would buy their registration services. TESS gives you a ton of results that are not really relevant.
For the sake of fun, try searching for “Micro-Soft Software Solutions” in both Trademarkia and TESS—and you’ll know what I mean 🙂
Yes, you are entirely correct. Also, in our practice, we see a lot of trade mark settlement and co-existence agreements, especially where one party needs the assent of the other to register a trade mark (Domain name). While keeping the immediate purpose in mind, it is critical to analyse the larger, long-term impact of the agreement’s provisions on each party’s company.