Monthly Archives: February 2008

Web Domain Names: The 21st Century Land Grab

Domain sales are booming.  It has been estimated that up to 45,000 domain names are registered each day.  Domain name speculation is big business.  According to VeriSign, the operator of the Domain Name System servers that support dot-com and dot-net domains, there are currently over 150 million domain names in use. In the last decade, was sold for $150,000. 

It was then sold for $7.5 million in 1999 and $345 million last July to R.H. Donnelley, a directory services firm.  $345 million for a domain name! While many sales remain private, domain auctions are taking place all over the country and we know of at least 33 domain sales for over a million dollars.  Some of the other top money-makers include: – $12.5 million; – $9.5 million; – $7.5 million; – $5.5 million; – $5 million; ? $3 million; – $2.1 million.

The potential advertising dollars are an important driver of this domain name economy.  Banner ads are everywhere on the Internet.  Google, Microsoft and Yahoo have developed sophisticated ad networks through their search engines that place ads relevant to the domain name.  Popular websites with intuitive domain names are valuable. Like real estate, most of the prime spots have been claimed and will now cost you a pretty penny, but the market is definitely on the rise and there are millions more to be made buying and selling space on the Internet. 

Contributed by Bruce Moseley.

Can You Really “Register a Trademark” in Minutes?

If you listen to talk radio or watch TV, you may have heard ads for a service that assists in preparing wills, forming business entities, and registering trademarks. At least one version of this ad claims this service can “register a trademark in minutes.” As a trademark paralegal, I can tell you that the mechanics of applying for trademark registration has never been easier. Online filing is relatively simple, even without the help of a service like I’ve described above. But that’s not even the first step in the process of getting a mark registered. Successful prosecution of a federal trademark application to registration can take 12 to 18 months and requires a number of steps, any one of which can doom an application if not done properly. Once a mark is registered, additional steps are required to maintain that registration. Here are some of the questions that need to be asked before paying (and possibly wasting) the application fee.

Is it a trademark?

Simply stated, a trademark is a word, slogan, logo, design, color, sound, motion or even smell that associates specific goods with their source. A service mark likewise associates services with their source. But not every identifier qualifies as a trademark or service mark. Selecting a valid specimen of the mark as it is being used in commerce is an important part of this process.

Is it available?

Some people come up with what they think is a great mark for their product or service, only to find that someone else got the same or similar idea weeks, months, or even years before. Unlike searching for domain name availability, conducting an availability search for a mark is an art, not a science.

How do you respond to the examiner’s refusals?

If the examiner doesn’t believe your mark is registrable as filed, an Office Action is sent out, listing the grounds for refusal. Some refusals, such as requiring a disclaimer or providing a substitute specimen, can sometimes be easy to overcome. Many pro se applicants never make it past the first Office Action; they either give up, fail to meet the response deadline, or prepare a response that the examiner finds unacceptable.

What if your mark is opposed?

Once the examiner is satisfied that the mark is registrable, it’s published for opposition in the weekly Official Gazette. Even if the examiner is convinced your mark deserves to be registered, third parties may claim your mark infringes on theirs. An opposition action can spell the end of your journey if not properly defended.

Your mark is registered. Now what?

As long as a trademark or service mark is in continuous use in commerce, registrations can be maintained indefinitely. But to do so, affidavits must be periodically filed and fees paid. Many registrations of active marks are cancelled because no one bothered to calendar the necessary maintenance and renewal dates. Despite advertising to the contrary, registering a trademark is never as simple and immediate as filling out a form. Because application fees are almost never refundable, it pays to do it right the first time.

Contributed by Carl Mueller