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Which Comes First, the Trademark or Domain?

For years, the question of exactly when to register a domain name has been one asked by legal departments, as they’ve sought to formalize their internal processes.

If you were to think about it logically, it would make most sense to register it after the trademark had been cleared. After all, why bother to register a domain, if you aren’t going to use it to support a product, service or campaign?

However, there are some major differences between trademarks and domains, and the ways in which they should be treated. To start, the same mark can be legitimately owned by multiple owners across different classes. But when it comes to a domain, there can only be one owner. And unlike trademarks where there are opposition periods, once a domain is registered, it’s pretty much gone – unless you have a right to the name and its being used in bad faith, or you can purchase it from the owner.

I know that I’m about to state the obvious, but another major difference between registering a trademark and domain is that registering a domain is fast, easy and inexpensive and just about anyone can do it. Whereas registering a trademark can be an involved, expensive process.

So am I saying that you should always register the domain first? Not exactly.

What I do think is, for any new potential brand, a search across the top 25 TLDs should be conducted to check whether the domain is available, using a secure Whois lookup tool. At that time, also do a search for close matches or obvious misspellings – this will give you an early indicator of whether the brand could be problematic. Depending on the term being searched, all names may show as available, especially if the brand is a totally made-up word. You might think, well this brand is in the free and clear, so I’ll just register these 25 domain names? Sure this seems like a no-brainer, but this could end up being a costly mistake if a full trademark clearance search shows the brand to be problematic.

So what to do? In this scenario, I would recommend first registering the .com anonymously through a retail registrar. DO NOT register it anonymously through a corporate-only registrar – this will do you no good, as domain speculators closely watch the registrations of corporate-only registrars. Once the trademark clearance search is complete, proceed with the additional registrations, also using an anonymized service if there is a desire to keep the brand name under wraps.

What I just described is the ideal situation – but often you’ll find that the brand you want is already registered as a domain in .com and a smattering of other top TLDs. Now what? The next question to be answered is whether or not another brand might do, whether concatenating the brand with product type is an option, whether doing without the domain altogether is possible, and how much the company might be willing to spend to purchase domains from the existing owners. Knowing how the domains are currently being used will be necessary in determining whether acquiring the domains from the existing owner is really even an option.

Too often I’ve seen companies launch brands without have the domains in place, only to scramble at the last-minute to register them or purchase them from squatters who learned of the brands because some domains were not registered anonymously. I’ve also seen companies spend hundreds of thousands of dollars to acquire domains and still not attain the market presence that they were hoping to achieve.

At the end of the day, there is probably no one right way to secure domain names for new brands. That said, what is critical is that companies take domains into consideration early-on in the process, prior to clearing trademarks. Doing so will not only allow companies to make better decisions regarding the pursuit of new trademarks, but it will also help to set expectations with regards to costs and effort required to secure domains.

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