Your domain name may be an essential part of your brand. Among the millions of domain names out there, it can be difficult to establish your web address as part of your business identity. In simplest terms, a domain name is your website name and the unique address where Internet users can access your website. This web address may be the same as your company name, or it may not be. Either way, you may be looking for ways to protect your domain name as part of your brand – and trademarking your Internet domain is one way of doing so.
Protecting your domain name as a trademark
A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods or services of one party from those of others. Using the trademark in commerce gives you default rights under federal and state law, but companies and business owners often seek to register their trademarks with the United States Patent and Trademark Office (“USPTO”). More on this below.
The benefit of using trademark law to protect your domain name is that you can potentially protect against the unauthorized use of similar web addresses which are being used in connection with goods or services similar to yours, and in a manner that is likely to cause confusion with your business. In other words, if someone is using a domain name that is similar to yours and the similarity would likely cause confusion, you may be able to sue for infringement or pursue a remedy under the Anti-Cybersquatting Consumer Protection Act.
Difficulties in obtaining trademark law protection
A domain name cannot be protected as a trademark merely because it is your address on the Internet. In addition to using the name in commerce, it must be used in a way that distinguishes your goods or services from those of others. Distinctiveness is key. The root of the domain name (i.e., the web address without the www. or .com) should be unique. Names that use surnames, geographic areas or common “descriptive” terms are generally not trademarkable. For example, books.com or California.com would likely not receive trademark protection. However, there are some open questions in this area. For example, Booking.com is currently seeking U.S. Supreme Court review of the denial of its trademark registration. Previously, courts have denied trademark protection to Hotels.com and other businesses based on the premise that the addition of “.com” to a generic word does not render it distinctive.
Domain names can be registered with an organization called ICANN by paying a fee to a domain name registrar. Registering your web address with a domain name registrar does not give you trademark rights. However, it is another way to show both the public and the USPTO that your domain name is distinctive and used to identify your particular goods or services.
Federal registration of your trademark
Trademarks are not required to be registered, however, federal registration of a trademark with USPTO has several benefits. A federal trademark registration gives you additional legal protections, such as a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, and the ability to bring an action concerning the mark in federal court. Also, registration puts the public on notice of your claim of ownership of the mark and that the mark represents your brand.
In addition, if your business continues to use its federally registered trademark in commerce for a period of five years after it has been registered, your business may also be permitted to file for “incontestable” status of the mark, which provides additional advantages should your company become engaged in a trademark dispute.
Domain names are an essential part of a business’s brand and may benefit from the extra protection of trademark registration. However, these laws are complex, and many marks are rejected for registration with the USPTO. An experienced trademark attorney can guide you in your trademark application as well as advice regarding other ways to protect your brand.
For more information on trademarks, read our related post – Should You Trademark Your Business Name or Your Logo?
This Blog is made available by Romano Law PLLC for general informational and educational purposes only, not to provide specific legal advice. By using this Blog you understand that there is no attorney client relationship between you and Romano Law PLLC or any individual contributor. You should consult a licensed professional attorney for individual advice regarding your own situation.