Last month when we switched from HackWordPress.com to WPHacks.com, I mentioned that one part of the move was due to the trademark violation in the old domain name (WordPress is a trademarked term).

Looking back, I really wish I would have known about the trademark prior to launching the blog.   Moving your blog to a new domain name can be a huge hassle (I explained what was involved here) and your blog will usually take a huge hit in the search engine rankings (either temporarily or permanently).   This is because most of those backlinks accrued over the past year are pointing towards the old domain name, etc.

Being someone who manages quite a large sized domain portfolio (300+ domains), I’ve spent a lot of time over the past year or so learning how to do a trademark search when researching what domains to invest my money in and which domains I want to develop into web properties.   There seems to be a good amount of interest from others wanting to know how to do this, so hopefully this post will fill that need.

Why Should I Worry About Trademark Violations?

Before I explain how to do a trademark search, I wanted to quickly discuss why avoiding trademark violations is so important.   A trademark is filed by a company to protect their brand.

How many of you call tissues “Kleenex”?  Kleenex describes one brand of tissues, but because they did not protect their trademark, the term Kleenex has instead become a generic term for tissues.  This of course caused them to lose any control they might have had over how their name is used.

Like any good company would, Automattic wants to protect the term “WordPress” from becoming a generic term.   This is why they do not allow others to use the term “WordPress” in their domain name.   This can lead to confusion with readers who believe that the domain is an official WordPress site or affiliated in some way with WordPress, which could eventually lead to problems for WordPress users (if the content is bad, incorrect, or the site is malicious in some way).

Because of this, most trademark holders will go a long way to protect their brand, including filing lawsuits.   Lawsuits, or threatening lawsuits, has become very common with people registering names like FacebookApplications.com, DiggThis.com, etc.    In order to avoid complications, avoid being forced to pull down a website/blog, or having to move your site to a new domain, you’ll want to first make sure that your potential domain/website is free of any trademarks.

Note:  If you register a domain prior to a trademark being filed by a company, that company usually won’t have rights to take the domain from you UNLESS you are displaying ads on the site or somehow making money off their brand.  Keep this in mind if you own a domain and an upstart grows popular fast.

How To Do a Trademark Search

Okay, so now you know why doing a trademark search is so important.   Here are the 5 steps you need to follow to do a trademark search:

  1. Visit the US government’s sitesearch page.
  2. Click Search at the top of the right sidebar menu.
  3. Click New User Form Search (Basic).
  4. In the Search Term field, you’ll want to enter the keyword you want to check on the trademark of.
  5. Click Submit Query.

When doing your search, you’ll want to make sure to search for your term with and without spaces. An example would be if you were looking for Burger King, you would try both “burgerking” and “burger king”.

If you follow the above steps and search for the term “wordpress” you’ll see that it is indeed trademarked, but you can use this method to search for just any keyword you want to.   I recommend doing this prior to ever launching a website of any kind, just to make sure.   I also used this process after picking my business name to ensure that I wouldn’t run the risk of losing my business identity at some point down the road.

Are you always doing a trademark search prior to launching a new website or blog?

Kyle Eslick is WordPress enthusiast who took his passion for WordPress to the next level in 2007 by launching WPHacks.com as a place to share hacks, tutorials, etc. Connect with Kyle on Twitter or Google+!

  1. Hilmy says:

    Had the intention in the past but didn’t really know how to go about doing it. So thanks a lot for sharing and I’ll go back checking all domains I have in my portfolio. Really hope I won’t run into problem then :)

  2. Mike says:

    Hi Kyle,

    Thanks for the tip!

    Were you contacted by Automattic to stop using “wordpress” as the domain name? I also have a wordpress domain and “was” thinking about developing it.

    Or were you being cautious?

    Thanks,
    Mike

  3. jbj says:

    Thanks for the article, Kyle, it was an interresting reading! Have you see how many WordPress related website uses the “wp” prefix in their domain name? WpHacks, WpForums, WpRecipes, WpCandy…and a lot more!

  4. Kyle, thanks for that post! I wasn’t aware of that site until now, and I never really did a trademark search before I purchased a domain. (To be honest, it hadn’t really crossed my mind!)

    But when you think about it, I’ve still seen plenty of sites out there with ‘WordPress’ in the domain name. In actual fact, I quite like the ‘WP’ prefix instead! :D

    Like you say JBJ, there’s many, and I’d quite like to find out how many. But I suppose that would be quite hard, don’t you think?

    Thanks
    Mark

  5. Kyle Eslick says:

    I’m glad everyone has found this post useful. Wish I had found something similar a few years ago. :(

    @ Mike – I was not asked to switch domains, but I was made aware that Automattic was unhappy with my old domain choice through several conversations (which I initiated) with Matt, etc. Their approach may be because this site was setup as a resource to help the WordPress community, rather than running a business using the WordPress name. For designers and others who sell WordPress services and are in turn profiting off the trademarked term, I do know many have received notices to switch domain names.

    For me personally, the switch was the responsible thing to do more than anything else, so once I found a compatible “WP” domain, I switched. The new domain sounds better, is easier to remember, and has more branding options so I’m quite happy.

    @ JBJ – Yes, there are several now and as trademark recognition grows, this is the case within other niches, etc.

    For instance, I’m getting ready to launch a VBulletin tip blog. I had to find a “VB” domain instead of one that uses the term VBulletin in it to ensure I didn’t run into any issues. I ended up finding one that I think will be a good fit for what I have planned and it is trademark free!

  6. SE7EN says:

    Wow thank you for the info. I searched for “se7en” and found that it was really registered (as an artist name) and other interesting info

  7. @Mark McWilliams : Me too. I never aware about trademark, if I think some domain are good, then I’ll go to godaddy and buy it. And thanks to Kyle Eslick for writing this article

  8. Kyle, speaking about vBulletin for a couple of minutes. I bought a domain, vBPress.com in fact, a good couple of weeks back for an idea I have/had! (But it wasn’t anything to do with tips, I was thinking more along the lines of actual themes/skins!) – It’s looking a little more complicated what I wanted to do though, so will maybe have to find an alternative idea! :(

    To add what I said in my other comment, there are some things that you can quite easily guess that are a trademark. Places like eBay for example, or even Dell! I guess it’s because of what WordPress is, that some people forget about the fact it IS a company and that’s their business name.

    Just thought I’d add another $0.02 worth! ;)

    Thanks
    Mark

  9. Kyle Eslick says:

    @ Mark – That is a great name! You need to find a way to develop it into something at least. I’m in the process of developing my “VB” name and will probably release information once it is ready to go and has some content built up.

    Yes, the reason I didn’t realize WordPress was trademarked is because it is open source. For some reason it just doesn’t seem like something that is open source could be trademarked, but obviously it can!

  10. trademark says:

    One thing your readers should note is that conducting a search of the federal trademark database is only the first step! You should also do searches of the state trademark databases, common law trademark databases, and internet domain name databases. Usually, you would want to hire a trademark attorney for all of this.

  11. Kyle Eslick says:

    @ Trademark – I think that is a great point, although for the context of this post, unless you are making a significant investment in your domain name, I’m not sure that is worth the expense. This post was intended primarily for people looking to register domains or to backorder domain names.

    For situations where you are spending $10,000+ on a domain name or if you are getting ready to start a business and want to make sure your potential company name doesn’t violate any existing trademarks, then I would definitely recommend a trademark attorney!

  12. Smart Fusion says:

    Very interesting – just looked up my company name (Smart Fusion) in both the US and Canada and apparently it is already trademarked. What happens next? I seriously want to keep and develop my domain (smartfusion.ca) and I’ve registered as a corporation.. hmm.

    Maybe time to talk to a lawyer. I wonder what’s involved in registering my own TM?

  13. Kyle Eslick says:

    @ Smart Fusion – I would recommend consulting a trademark attorney. This is especially important if you are planning to become a corporation, as you don’t want to put all the time and resources into branding a name and then have to change your businesses name.

    I know a lot of people this has happened to, so you’ll definitely want to look into this further before proceeding just to be safe!

  14. Smart Fusion says:

    Thanks Kyle – I’ve already incorporated (Smart Fusion Marketing Inc.) so presumably there wasn’t a problem with that. I think I will take your advice and talk to my lawyer though – I want to be 200% certain my domain is mine forever and ever…

    I guess I’m not really that concerned about the US TM as I’m incorporated in Canada…

    Cheers

  15. Philip Cooper says:

    If you are in the UK, our website has plenty of free info on trade marks and copyright.

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