Trademark Should I get a Trademark?

[scottct1]

In 2002 I started SatelliteGuys.US which quickly grew into America's Largest Satellite Discussion Forum. Now 9 years later we are huge and serve over a half million unique IP addresses a month. Besides being an online forum we also sell T Shirts and are in talks now to sell SatelliteGuys branded satellite accessories and receivers.

I now own all the domains to my site, everything but .xxx, a few month ago I obtained the final piece of the puzzle and purchased the SatelliteGuys.COM domain!

I plan on moving my site from .US to .COM shortly as I was contacted by Google Adsense and told that because I was using .US that I was losing up to 25% of my revenue and that I should move to .COM as soon as possible.

Anywas since buying the .COM domain I have been contacted numerous times from people looking to buy the .COM domain one told me they want to open up a SatelliteGuys store with the .COM so they can play on the success of my site. (Sorry no sale.)

So then I got nervous, I don't want people using my name and am now thinking about Trademarking SatelliteGuys to protect myself. However in reseaching I can not find that any other major forum which has trademarked their name.

On of my concerns is if I get a trademark how I go about policing it? I don't have much money to have a full time lawyer on staff to look and enforce violations. In reading it appears that if you don't police it then you could lose the trademark. So I am unsure of what way to go, I may just be too paranoid.

Any advice anyone can share?

 

[Michael Wechsler]

File the trademark - you can do it yourself at the uspto.gov although you probably want guidance. It's somewhat "generic" (people might say call the cable guy or satellite guy, etc.) so to some degree this could be tricky. Doing this improperly can result in your application being denied (and sometimes even doing it properly results in the same.) If you need help you can contact us and we'd be glad to help you and can also connect you with an attorney right nearby - we are also in the tri-state area. There is more complexity with trademark than there is with copyright, which not only includes optimal way to file with a description but also to choose the right class or classes for protection. The law allows for "classes" -- different types of recognition such as by industry. So one company can have a trademark for Buster Brown shoes for clothing and apparel. Another company can have Buster Brown as a trademark for the manufacturing of airplanes. You need to choose the classes that correspond to you for protection, and you'll probably want to protect yourself in the area you primarily do business first. My guess is that having the .com domain will help you against those seeking to infringe upon your trademark (since many will go there to look up information for a company) but you never know.

Most important for you isn't even the .us or .com domain - it's establishing your brand in business. Policing your trademark means sending cease and desist letters to those who are infringing upon your trademark. Once you have your trademark I don't think you should worry about policing it as vigilantly as you worry about. If you become aware of its usage in a wrongful manner you can then cross that bridge if and when it comes to it.

In the meanwhile, great site - I love it! You're closing in on the 3 million post mark and have a lot to be proud of! That's a very big board! If we have satellite questions we're glad to send people over to you for answer and let the people with legal questions know where to go, lol!!!

 

[Michael Wechsler]

FYI, doing a search, the only mark I found was cancelled. This might give you some insight (note - this is not a "word" mark but a trademark of the drawing, e.g. a picture or logo.)

Typed Drawing

Word Mark THE SATELLITE GUY
Goods and Services (CANCELLED) IC 035. US 100 101 102. G & S: Retail store services featuring satellite television systems. FIRST USE: 19961031. FIRST USE IN COMMERCE: 19961031
(CANCELLED) IC 037. US 100 103 106. G & S: Installation of satellite television systems. FIRST USE: 19961031. FIRST USE IN COMMERCE: 19961031

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76063931
Filing Date June 6, 2000
Current Basis 1A
Original Filing Basis 1A
Published for Opposition May 21, 2002
Registration Number 2606592
Registration Date August 13, 2002
Owner (REGISTRANT) Satellite Guy, Inc., The CORPORATION TEXAS 14628 Flanders Court Addison TEXAS 75001
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SATELLITE" APART FROM THE MARK AS SHOWN
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Cancellation Date May 16, 2009