With the rise of not only pure-play online businesses but the importance of traditional brick and mortar businesses to maintain online visibility, domain names have become an interesting topic in regards to trademark law.
Are domain names eligible for trademark protection?
To put it simply, yes – website domains are eligible for trademark protection, just like brand names. They’re also open to the same limitations of other marks.
What will it actually protect?
The big benefit of officially registering your domain name as a trademark with the USPTO is the option for legal recourse if someone begins infringing on your mark.
When it comes to domain names, a common form of infringement happens when someone else registers a domain that is a small typographical error from your domain. For example, one well known typosquatting case from nearly twenty years ago involved a man named John Zuccarini who was running a website on WallStreeJournel.com, a close typo of WallStreetJournal.com. He was found to have registered the domain in bad faith, with the intent of profiting from the close spelling to the very well known Wall Street Journal, and had to turn the domain over.
The other common form of cyber infringement is when someone uses your mark in a domain name of their own. For example, Google seized over 750 domains from a man named Chris Gillespie in 2012. These names included GoogleChevron.com, GoogleDonaldTrump.com, and hundreds more.
Domain trademark limitations
Just as with other types of marks, attempting to use generic marks in connection to a product directly implied by the name will be near impossible.
For example, Apple Inc. is able to enjoy protection of its marks as it relates to the sale of computer equipment. If they were attempting to sell apples instead, it is extremely unlikely that they would have been able to secure that mark.
This is why there are no live marks for generic domains like Shoes.com. The domain, owned by ShoeBuy.com, is unsurprisingly used for selling shoes online. This pushes the domain into the territory of being too generic, and outside the bounds of trademark protection. However, a modified domain like Dillards-Shoes.com would likely be able to secure trademark registration.
No free lunches
It’s worth taking a moment to note that registering your company name as a trademark does not automatically give you rights to the corresponding domain name.
If you were a software creator and were granted the trademark on “Philosophy Programs”, you aren’t automatically entitled to PhilosophyPrograms.com. If someone bought the domain and started using it to sell software, you may very well have a case. However, if they were selling educational courses about philosophy, you’re likely out of luck.
Context is everything
These examples stress the importance of context when securing any mark, including domain names. Getting a trademark isn’t about “owning” a word or phrase. It’s about providing distinctiveness in branding and preventing consumer confusion.
Registering your trademark
If you want to go through the process of registering your domain name as a protected mark, there are four basic steps you’ll need to follow.
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Perform a comprehensive trademark search
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File a trademark application with the USPTO
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Monitor your application
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Finalize your registration
The search step will ensure you’re not attempting to register a mark that already belongs to someone else. While this may feel unlikely in the case of a domain name, you can definitely still run into another person or company with a similar mark.
Filing your trademark application with the USPTO will cost a few hundred dollars and can get a bit complicated unless you’re already very comfortable with the goods and services classes you want to cover.
Monitoring your application will happen over the several months it will take the USPTO to come to a decision. Typically, this will last four to six months.
Finalizing your registration will involve responding to any challenges that may arise. Once the USPTO has approved your mark, it will be published for public review and opposition for 90 days. If there are no challenges, and assuming you have met all of the requirements for a registration, you’ll officially have your mark a few months later.
These steps can get a bit complicated, so as with most legal matters, it’s likely a good idea to consult an attorney.
Xavier Morales, Esq. is a licensed trademark attorney. In 2010, The Trademark Insider named Mr. Morales the #1 Trademark Attorney in the United States as determined by the number of trademark applications filed in the previous year. Mr. Morales has filed over 5,000 trademark applications with the United States Patent & Trademark Office. Mr. Morales founded his trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Mr. Morales’ law practice emphasizes trademark registration, counseling and enforcement.
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