Under U.S. Trademark law, a trademark functions as a word, a name, a symbol, a device, or a combination of all of the aforementioned items that legally identifies and indicates the source of goods or services for a company or an individual. Whether you are a large corporation, a small business owner, or an individual, your domain name may qualify to be federally registered as a trademark with the United States Patent and Trademark Office (USPTO).
Even though you do not need a federal registration to begin using a domain name, it is still a good idea to go through the registration process with the USPTO in order to get the intellectual property protections associated with a federally registered trademark. Business owners who obtain a unique domain name but have not obtained a federal trademark registration often find themselves on the wrong end of a trademark infringement claim. This happens when the holder of a federally registered trademark notifies you that your domain name infringes upon the use of their trademark. The infringement claim usually hinges on the fact that your domain name has the potential of confusing the public as to the origin of your website and creates the notion that the trademark holder is somehow involved with your website and domain name.
In order to avoid this potential litigation, it is important to go through the process of federally registering your domain name as a trademark. However, not every domain name can be federally registered as a trademark. In order for a domain name to be federally registered as a trademark, you or your business must use the domain name to sell goods or services.
The USPTO has stated that "a mark comprised of a domain name is registrable as a trademark or service mark only if it functions as a source identifier."1 The trademark (for a domain name) must be presented in a manner that will be perceived by potential purchasers as indicating source and not as merely an informational indication of the domain name address used to access a website.2 In short, the domain name must function to identify the goods and services sold on the website and not merely indicate the location on the internet where the applicant's website appears.3
If your domain name fits under these requirements, then you should consider following these tips in order to federally register your domain name as a trademark:
- Search for Conflicting Trademarks: Before beginning the federal trademark application process, conduct an informal internet search and a formal search on the USPTO's website to search for any trademarks that conflict with the domain name you would like to register. It is important to search for any conflicting trademarks before filing a federal application because if the USPTO declines your application because a conflict exists, the federal government will still charge the filing fee. Additionally, if you begin to operate a domain name that creates a conflict with a federally registered trademark, you could lose the right to use the domain name if the trademark owner takes legal action for infringement.
- Descriptive and Generic Refusals: When choosing a domain name to register as a trademark, it is important to create the most distinctive and unique domain name possible to identify the goods and services on your website. If the proposed trademark is composed of a descriptive term or a generic term for your goods and services, the examining attorney at the USPTO will most likely refuse registration.4 If the proposed trademark is merely descriptive, non-unique, or does not provide identification to the goods and services provided, then there is a slim chance that the USPTO will accept the federal trademark application.
- Filing the Application: It is important to research the USPTO website, especially the USPTO's Trademark Electronic Application System, in order to determine what type of federal trademark application you need to file based on the status of your domain name. For example, there is an application for applicants who are already using their domain name in commerce; an application for those who intend to use their domain name in commerce; and an application for applicants who live outside of the United States and have registered the domain name as a trademark in another country. It is important to determine which application class you fall under in order to circumvent any unnecessary costs or amendments to the application in the future.
The rise of electronic commerce over the past decade has created a surge in Internet law issues, particularly concerning the protection and infringement of domain names. If your domain name qualifies to be a federally registered trademark, you may be able to protect a vital part of your business and avoid substantial expenses associated with litigation.