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Registering a Trade Mark - use legal company or do it yourself?

ttfan

Top Contributor
I would like to register a trademark, mainly to ensure I can continue to hold a 4-letter .com.au domain used mainly for Email. Although the 4-letter domain is part of a business name, it's not the full name, so there is some uncertainty if there was ever a complaint to auda.

Anyway, it seems it's only $250 to get one, so probably worthwhile.

Although I could apply directly via ipaustralia.gov.au, I found a website for a legal company called LegalNow, that offers to do most of the work and checking for you, at no extra cost. I'm not sure what they get out of it, or if it's just a special deal.

Has anyone heard about this company or have used them? Is there a risk in using another company to make the application, instead of doing it myself?

Thanks a lot!
 

Kyle-K

Member
Although the 4-letter domain is part of a business name, it's not the full name, so there is some uncertainty if there was ever a complaint to auda.

Without knowing more, in these situations what I've seen similar to what you've described most of the time these domain names are easily held under current policies and a easily defended if someone does a welfare check.

Problem lies that most people are not ready and don't respond in my opinion in a strong enough manner to the report or are stupid and provide more information than required.

Keep it brief and concise and respond to the eligibility points and quote the relevant sections placed it on company letterhead sign it and issue at to your registrar. Do not give them anything more than what you need to for eligibility.

I've seen people go into a full history of why they own the domain name and hang themselves.

However if you think you're going to need to hold this domain name in the next few years and may no longer have an ABN or company registration a trademark is a good option to continue holding it in situations like that.

The suggestion at that point is once you have your trademark don't allow it to be used as defence as soon as you're in the next renew period start a change of registrant and move it into the trademark you may get lucky and your registrar will let you do this without starting a CoR.
 

ttfan

Top Contributor
Thanks you for the detailed information Kyle-K, much appreciated!

I'm aware of the auda requirements, but I'm not certain how they would see this case, and I've never had to defend a domain before.
For example, you have a business called:
"As Soon As Possible Trading", also trading as "ASAP courier services".

The domain you register is ASAP.com.au.

All you customers know your business as ASAP, but technically that's not your full business name. Would auda see this domain as meeting eligibilty requirements? I'm not sure, as they could argue that ASAP neither matches the full business name, nor is it an acronym of the full business name.

What would you do?
 

Kyle-K

Member
That falls under abbreviation. You can easily defend something like that. Just because you dropped one word from the full business name is not a factor.

You could easily in your scenario.
"As Soon As Possible Trading", also trading as "ASAP courier services".
Also be entitled to SPT

If it is that exact use case posted in your example there is no way that's getting taken away from you and it would take some serious incompetence on the registrars behalf which I would be straight over to auDA at the first sign of this incompetence. I've had to do this in the past for clients unfortunately there's some shitty registrars out there.
 

ttfan

Top Contributor
Thanks Kyle-K!

Yes my case is almost exactly like that, so perhaps I'm worrying too much!

I did notice though that there is now (since 2021) a trademark on the full name, which in the example above is "As Soon As Possible". The same business did not register a trade mark on the abbreviation ASAP, which could have caused a conflict. We've had our business name for about 20 years though, so they'd have no case if they decided they wanted the abbreviation as well.
 

ttfan

Top Contributor
Has anyone had any experience with the legal company that mentioned above (LegalNow), that offers the no-fee trademark registration? The link I posted seems to have been removed, but if you google the name it comes up on top.
 

trellian

Top Contributor
A TM is not needed to hold an acronym domain that matches the company name. So seems like a waste to go through that process. But if you wish to protect that acronym from others using it, then the TM is then worth getting in the classes you need the protection in.
 

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