How To: Do a Trademark Search

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?

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  • Should WordPress Fan Sites Worry About The WordPress Trademark?

    Today I ran across an interesting discussion happening over at one of my favorite WordPress blogs, WPCandy, that I figured I would mention over here.

    The discussion is regarding trademarking, and the use of “WordPress” in your domain URL.   Obviously this domain uses WordPress in the URL, so I have both a fan interest and a financial interest in the discussion.

    First, here is some information from Michael’s post:

    According to WordPress.org, to protect their trademark they ask that if you are going to create a WordPress related site not to use “WordPress” in the domain you choose.

    What’s the meaning behind this? Are sites that use WordPress in their name at risk? Is WPCandy at risk?

    Although they are not lawyers, WordPress still insists that they must make it clear, “so that we protect our trademark.”

    In addition to running this website and Slick Affiliate, I also spend a lot of my spare time as an active “domainer”, meaning that I buy/sell/develop/park domains both to generate extra income and invest in my online future.   One of the things you learn very early when you buy and sell domains is trademarking and what domains are off limits.  When you purchase a domain that includes the name of a trademarked product, the company that owns the trademark can take it from you if they invest the time and resources to.

    Unfortunately, when I originally purchased the domain Hack WordPress, I knew about the risk of trademarked domains, but I didn’t realize the word “WordPress” had been trademarked.  Looking back now, I probably should have done a trademark search, but it is to late now.  When I eventually learned that it was indeed trademarked, I went out and purchased a “wp” domain that I am very happy with, should I ever have to move this website to a new domain.

    Fortunately for those of that have a “WordPress” domain, I find it very unlikely that WordPress would ever invest the time or money involved in “shutting down” domains that use WordPress in the URL unless the sites were somehow trying to harm WordPress in some way, or were making really good money off the WordPress name.   After all, this product is built upon open source and the WordPress community!  I believe that WordPress fan sites do a lot to help the software and the community that supports the software, so it probably would not be in their best interests to remove them.  We promote the WordPress product for free and help generate both interest and support for their product.

    Overall, I believe this statement is more a legal precaution to protect them in situations where they would need to enforce this.  The only thing I worry about is a major corporation such as Google/Yahoo/Microsoft acquiring WordPress, because they have been known to pursue fan sites violating trademarks.

    What is your take on this issue?

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