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Author Topic: Geographical Issues  (Read 1051 times)

Bill Richards

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Geographical Issues
« on: 06-01-06 at 04:03 am »

I have a client who wishes to trademark a domain name in a design.  I believe it overcomes the hurdles necessary to register a domain name, but it may have other problems.  It's two words combined into one where the second word is a nickname for a geographical location/area.  The first word is a common word, but I don't want to say more at this time to avoid disclosing too much.   In addition, the logo has some design elements.  Comments?  What about registering the word mark and the design separately?
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
www.wbrfirm.com

Isaac

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Re: Geographical Issues
« Reply #1 on: 06-01-06 at 04:40 am »

It depends.

Your questions are not answerable without the information that you need to withhold.  I'd suggest talking to an attorney in whom you can confide the details.
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Isaac

JSonnabend

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Re: Geographical Issues
« Reply #2 on: 06-01-06 at 05:53 am »

Generally, I don't see any problem with "trademarking" (i.e., registering a mark) that consists of a stylized version of a domain name, provided the domain name is used as a trademark and not merely a domain.  Registering both the word mark and the design/composite mark is usually advisable.

Regarding the geographic component of the name, provided it's not merely geographically descriptive (or misdescriptive), that should not present a problem.

Isaac is 100% correct that you should talk to a qualified tm attorney to go over the details.  I'll be in my office all day if you want to discuss this further.

- Jeff
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SonnabendLaw
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RMissimer

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Re: Geographical Issues
« Reply #3 on: 06-04-06 at 11:35 am »

This brings up a good ethics issue, and maybe those that have been practicing longer than I can help answer this.

Can an Attorney out-of-state solicit business from a state where they are not registered?

It is my understanding that to make a first contact in a state where an attorney is not licenses is illegal or at least unethical.   In Wisconsin, an attorney can be santioned and they will provide the state of registration with a complaint if an out-of state attorney is reported.  They could even make such a report based on the use of "JD" or Attorney in the name field.  With the internet it is hard to avoid such convension.

Further, How do we handle such contact issues.
Since I have lots of out-of-state (and even out-of-country) clients, I am thinking of leaving my registration as "Patent Agent" after I get my license this summer.
I just can't afford the loss of business,  and potential out-of-state customers.

Any Suggestions?
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Attorney Richard S Missimer
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Bill Richards

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Re: Geographical Issues
« Reply #4 on: 06-04-06 at 03:02 pm »

This is a good topic, although perhaps not buried here.  But, in the interest of keeping the ball rolling . . . .   When I contacted several other states about sending letters announcing my new practice into their states, none had any problem with it as long as I met their rules regarding advertising and solicitation.
What's the status of groups like this?
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
www.wbrfirm.com
 



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