QUESTION

Trademarking a new word

Asked on Jan 23rd, 2014 on Intellectual Property - New Jersey
More details to this question:
Suppose I create new word. That word is "example" My company goes by Example, LLC and I trademark "Example" Why would I need to trademark "Example.com" if I already trademarked the new word? Wouldn't trademarking the new word protect anyone from using it to sell a good or service? Or does that only protect me from someone trademarking anything with the word "Example" in it? And just say I only trademarked "Example.com" could someone use "Example" (the new word)? I am a little confused on whether I need to trademark my domain in order to protect my brand. It is a startup.
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1 ANSWER

Intellectual Property Attorney serving Manchester, NH at Hayes Soloway P.C.
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If you have "example" trademarked and you own the URL "example.com", there is minimal value in registering example.com as a trademark. The exception would be if you used .com as part of your trademark (and not simply as a web address to buy your goods/service). I've got a brief jingle rolling around in my head where someone sings "hotwire.com". They are making the .com part of their consumer recognition. They should register "hotwire.com". I never see Apple advertise themselves as Apple.com, so they would not get any material benefit from that registration. Also, keep in mind that someone else could register example as a trademark for goods/services unrelated to yours. Think of Delta Faucets and Delta Airlines, both of whom own Delta for their goods/services. A made up word, like Kodak, is going to receive broader protection, but it would probably be a mistake to think no one could ever use the same or a similar name for a completely different purpose.
Answered on Jan 23rd, 2014 at 8:22 AM

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