Intent To Use The Domain As A Trademark
One situation where you would obtain a domain name trademark registration is where you purchase a domain name and want to use the domain name as your trademark but are not yet ready to launch your website. One of the many benefits of trademark registration in the U.S. is it allows you to reserve rights to a particular name by filing an intent to use application. This will allow you to reserve your right over the exclusive use of the domain name despite not having yet used it in commerce. This type of application will give you rights over the name even in situations where others use the mark before you.
Fill Out An Application
There are three ways to apply for a U.S. trademark: one for applicants who have already used the mark in commerce a second for those who havent yet used a mark in commerce but intend to do so and a third for applicants who live outside the United States and have registered the mark in another country. You can fill out any of these applications, check them for completeness and submit them online.
Along with the application, you must provide a drawing of the mark on a separate paper and pay the filing fee. You must also provide three specimens for each class of goods or services that you sell if your application is based upon prior use of the mark in commerce.
About four months after you file an application, the PTO will review it and determine whether it can register the trademark.
What Happens If There Is A Conflict Between An Internet Domain Name And An Existing Trademark
Even if a company owns a federally-registered trademark, someone else may still have the right to the domain name. For example, many different companies have federally registered the trademark Executive for different goods or services. All of these companies may want www.executive.com but the first one to purchase it in this case, Executive Software is the one that acquired the domain name and has the rights to it.
Sometimes a person registers a trademark as a domain name hoping to later profit by reselling the domain name back to the trademark owner. If you believe that someone has taken a domain in bad faith, you can either sue under the provisions of the Anticybersquatting Consumer Protection Act , or you can fight the cybersquatter using an international arbitration system created by the Internet Corporation of Assigned Names and Numbers . The ACPA defines cybersquatting as registering, trafficking in, or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else. The ICANN arbitration system is considered by trademark experts to be faster and less expensive than suing under the ACPA, and the procedure does not require an attorney. For information on the ICANN policy, visit the ICANN site.
Courts and arbitrators generally side with trademark owners in these disputes and order the cybersquatter to stop using the trademarked name.
Don’t Miss: How To Buy Cn Domain
When Does An Internet Domain Name Qualify As A Trademark
A domain name, such as nolo.com, can qualify as a trademark when it is used in connection with a website that offers services to the public. This includes all sites conducting e-commerce and sites such as Yahoo.com that provide Web-related services.
However, only some types of commercial domain names qualify for trademark protection. For instance, while domain names that use common or descriptive terms, such as healthanswers.com or stampfinders.com, may work very well to bring users to a website, they usually do not qualify for much trademark protection. This means that owners of such domain names generally won’t have much luck stopping the use of these words and phrases in other domain names. In other words, by using common terms that are the generic name for the service or by using words that merely describe the service or some aspect of it , the owner of the name will have less trademark rights against the users of similar domain names than she would if her domain name was distinctive.
How Do I Register A Domain Name Trademark
If a domain name is available and is not a protected trademark of another company engaged in a similar goods or services business, an applicant can register for the domain name. ICANN provides a list of approved registrars. The applicant will need to pay a fee, which is assessed yearly, and provide contact information. Once registered, the domain name owner has the exclusive right to use the domain address, but this right alone does not prohibit others from using the name for a business or product.
Also Check: How To Check If A Domain Is Available
How Are Conflicts Resolved Between Domain Names And An Existing Trademark
If a company already owns a federally registered trademark, it does not necessarily prohibit someone else from owning the domain name. There are some circumstances when a trademark owner can prohibit the use of a domain name.
- It infringes on a federally registered trademark: If another company uses a domain name that is similar to a trademark and is engaged in a business providing similar goods or services, the trademark owner may prohibit its use under trademark law. This is because the similarity between the trademark and the domain name may confuse consumers.
- It dilutes a famous trademark: If the commercial use of a domain name dilutes or tarnishes the reputation of the famous trademark, the use of the name may be terminated under trademark law.
What Is Considered A Business Name
Entrepreneurs can use their private name as a part of an enterprise name that may be registered with both the state or other proper authorities, such as the Small Enterprise Administration. A registered enterprise name, such as “Robert Doe Consulting,” can provide a proprietor with a proper trademark and demonstrates business use of the identity. In utilizing a private name as a part of an enterprise name, although the enterprise bears the proprietor’s name, it’s legally thought of a fictitious identity, in line with the SBA. Registering an enterprise identity in a state only registers the identity in that state and not necessarily other states. For nationwide coverage, it may be worthwhile to register as a trademark with the patent office.
You May Like: Does Shopify Own Your Domain
Trademarks And Domain Names: Everything You Need To Know
Trademarks are your primary identifying feature when conducting business. 3 min read
Trademarks are your primary identifying feature when conducting business. A trademark could be a logo or a phrase, but whatever it is, it is uniquely yours. No one else can make use of your trademark under penalty of law. A domain name is your location online. This is a web address where visitors can see everything your business has to offer. It is the center of your online presence.
Both can only be registered for a limited amount of time. Trademarks expire after ten years unless you choose to renew them for another ten years. Meanwhile, domain names last for an amount of time agreed upon between the registrant and the registrar and are also subject to renewal.
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. Trademarks can be inherently distinctive if they are famous, arbitrary, suggestive, fanciful, or names coined for the specific purpose of being trademarked . The root of the domain name should be unique. Names that use surnames, geographic areas or common descriptive terms are generally not trademarkable. Books.com or California.com, for example, would likely not receive trademark protection. However, there have been limited instances where certain descriptive terms, when combined with the .com top-level domain, changed the generic nature of the combination and, thus, became eligible for trademark protection.
Recommended Reading: How To Get A Website Domain
Uspto Reviews Statement Of Use
A statement of use must meet minimum filing requirements before an examining attorney fully reviews it. If the SOU does meet the minimum filing requirements, then the examining attorney reviews it to determine whether it is acceptable to permit registration. Submission of an SOU does not guarantee registration. You may not withdraw the SOU and the filing fee will not be refunded, even if the SOU/application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the SOU.
If refusals or requirements must still be satisfied, the examining attorney issues you a letter stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately two months. If all issues are not resolved, the application will abandon.
Perform A Trademark Search
Conducting a trademark search is an essential but often overlooked step in registering a domain name with the USPTO. This is because youre not legally required to perform such a search in order to receive trademark protection.
Trademark searches are meant to find any pre-existing trademark that could cause a likelihood of confusion. This means exact matches arent necessary to constitute infringement. If your domain name is dalta.com and you sell sink faucets like Delta Faucet Company the simple change of spelling isnt enough to protect you from exposure to a claim of trademark infringement.
You can use the Trademark Electronic Search System for your search, but this wont provide a definitive answer. Common law identifiers, business names, domains not registered with the USPTO and many other issues can present problems. Thats why it is highly advisable to have a trademark attorney perform the search. If possible, performing a search before investing in a domain name is even better.
Recommended Reading: How Can I Check If A Domain Name Is Available
Next Steps To Trademark Your Domain Name
So, where do you go from here? Seek out legal counsel. Always consult an attorney to better understand your specific situation. Attorneys offer free consultations to at least help point you in the right direction. Its no secret that working with a lawyer isnt cheap. But the amount of money and headache it can save you, in the long run, might be worth it. After chatting with all these lawyers I know Im in the market for a trademark attorney for a business idea Ive been considering. Based on everything they shared with me, I think trademarks are a necessary business expense. If nothing else, it gives you peace of mind that your brand/company identity is better protected.
This content should not be construed as legal advice. Always consult an attorney or legal professional regarding your specific legal situation.
How useful was this post?
Inactive Websites And Cybersquatting
What if there isnt a company actively using the PHILOSOPHYPROGRAMS.COM domain? What if the website is merely inactive, with just a generic landing page or a holding page? Since no one is actively using the domain, it might seem as though you have a claim to it.
In a few cases, you might. But unless you can prove a bad faith registration, you might not have any claim at all to that domain name. If you want to use it for your business, youll have to acquire it from the current owner.
What about cybersquatting? The intricacies of cybersquatting confuse many people. The practice was much more widespread in the internets early days, when companies didnt realize its necessity. Opportunities for cybersquatting are far fewer today.
The Anticybersquatting Consumer Protection Act does provide trademark owners with some rights when dealing with bad-faith registrations. That is, the owner of the PHILOSOPHY PROGRAMS trademark must prove that someone else registered PHILOSOPHYPROGRAMS.COM after the owner of PHILOSOPHY PROGRAMS filed a federal trademark application or otherwise possessed a distinctive and recognizable common law trademark. Even at that point, the trademark owner has further burdens of proof.
You May Like: How Can I Renew My Expired Domain Name
How Is A Business Name Registered Within A State
If you apply to be an organization or an LLC, the Secretary of State’s office does a search to guarantee that your proposed enterprise name isn’t already in use by another firm in your state. Each state has its own legal guidelines about how different your mark has to be from the name of a different enterprise. For example, in some states Randy’s Bar cannot be used when there’s already a Randy’s Bar registered. Different states may consider such an application and consider whether Randi’s Bar is related and deceptive. As soon as your LLC or company name is authorized, your name is protected within the state. A different enterprise cannot register an LLC or company with the identical name in that state. Nevertheless, there’s nothing to stop an enterprise that operates as a sole proprietorship or partnership from utilizing your name within the state as they fall within a different category.
As a small business, such trademark and business name protections are typically sufficient. A small business is less likely to come into direct competition with an enterprise in another state. Moreover, there is little likelihood that a consumer will be confused by the similarly-named enterprises. However, with the advent of the internet, and if your business expands to other states or nationwide, it may become necessary to consider filing your trademark at the federal level.
When Is A Domain A Trade Mark Infringement
Lets start from the beginning: the mere registration of a domain is not a trade mark infringement because it does not constitute trade mark use.
But, if a very well-known company name is registered as a domain name in the course of non-business transactions, the domain registration itself constitutes an unauthorised use of the name according to § 12 of the German Civil Code , according to the 2011 BGH decision shell.de. In such a case the company could claim that the domain holder renounce the domain name shell.de vis-à-vis DENIC.
Does this mean that before registering a domain name, one must first check whether any trademark rights exist for the domain name? No, that is not demanded.In any case, the DENIC, the registry for top-level domains with a German country code, does not check this as a matter of principle. And DENIC does not have to, because the allocation and administration of domain names does not per se constitute the use of a trademark in the course of trade. Only if DENIC is made aware of an obvious infringement of the law can it be required to cancel the illegal registration.
Important is the content of the registered domain: According to the German Federal Supreme Court , homepages with no content do not in principle constitute use that infringes trade mark rights, because the domain name is not yet associated with any specific goods or services there can therefore also be no likelihood of confusion .
You May Like: How To Set Up A Website With A Domain Name
You Use The Full Domain As Your Name
You want to use the full domain name as your brand name. An example of this is Overstock.com, eHarmony.com, or hotels.com. When promoting their brand, these businesses always emphasize the .com portion of their name. Therefore, depending on your marketing strategy you may want to consider filing a domain name trademark registration for your domain name. This is especially the case where you use your domain name to identify and distinguish you from your competitors.
- If you utilize the .com portion or the website suffix in your business name, then odds are youll want to acquire a trademark for that name.
Registered Trademark Vs Unregistered Trademark
When you register your trademark, you get the sole right to use the mark across Canada for 10 years. You can renew your trademark every 10 years after that.
A registered trademark is one that has been entered in the Register of Trademarks. The certificate of registration is direct evidence that you own the trademark.
You do not have to register your trademark by using a trademark for a certain length of time, you may have rights under common law. However, if you use an unregistered trademark and end up in a dispute, you could be looking at a long, expensive legal battle over who has the right to use it. If you fail to actually use the mark for a long time, your registration may be taken off of the Register of Trademarks, which will make it more difficult to prove legal ownership of the trademark.
Read about how to register trademarks outside of Canada later in this Guide.
Don’t Miss: How Much Does Eminent Domain Pay
Establishing Trademark Infringement Under Lanham Act
The Trademark Act of 1946 prohibits uses of trademarks that are likely to cause confusion about the source of a product or service. 15 U.S.C. §§ 1114, 1125. Moreover, to establish a trademark infringement claim under the Lanham Act, a plaintiff must establish that defendants use of a mark is confusing similar to plaintiffs. Id. The main area of inquiry in trademark infringement cases is whether the similarity of the marks is likely to confuse customers about the source of a product or service. Brookfield Communications, Inc. W. coast Entmt corp., 174 F.3d 1036, 1062 .