Trademark Domain Names
This article is meant to be a brief overview of trademark basics while informing the reader of the possibility for federal domain name registration. This is yet another tool for protecting your most important asset, your intellectual property.
Q: Can you trademark domain names?
What is a trademark or service mark?
A trademark is used to identify the source of the goods and distinguish the goods from other goods.
A service mark is used to identify the source of the services and distinguish the services from other services.
Which domain names can be registered as a trademark or service mark and which cannot?
The U.S. Patent and Trademark Office has issued the statement that:
“an internet domain name that is used to identify and distinguish the goods and/or services of one person, from the goods and/or services of others, and to indicate the source of the goods and/or services may be registered as a trademark in the PTO.”
However, keep in mind that domain names must meet the same requirements that other trademarks and service marks must meet.
The most important distinction to be made when considering to register a domain name.
An applicant needs to show that the domain name is more than a directional reference. The domain name must be used as a source identifier.
How the U.S. PTO categorizes domain names.
Three broad categories are provided: Connection providers, access providers, and content providers. Content providers will be the most likely category for the majority of domain names.
- Search marks before registering / adopting a domain name.
- Search marks / domain names before adopting a company name.
- Search domain names before adopting a trademark or service mark.
- Register your domain name.
Most importantly: Prepare a plan of action with an attorney to create a timeline for necessary action. Plans of action will vary depending on your specific case, for example: have you already registered the domain name?, do you use the domain as a reference or source identifier? etc.
A search for each mark is recommended, although not required before filing an application.
A basic federal screening search will determine whether the mark has already been registered.
A federal and state search, along with an opinion of the marks potential for registration, is recommended over a basic federal search. Since one consideration is whether a mark is confusingly similar to another mark, a basic federal search may be inadequate to truly gauge the marks potential for registration.
The most complete search includes common law marks, and domain names, along with federal and state marks. This option is especially useful if you are considering to adopt a new mark, which you have not used yet, and wish to determine whether you should adopt the mark. This is the most complete search out of the above three.
Two types of applications may be filed:
- A ‘use’ application. If you have already used the mark.
- An ‘intent to use’ application. If you have not used the mark yet, but intend to.
Entire process and timeline.
Typically the entire process will take about a year.
A lawyer at the PTO examines the mark and may raise questions which need to be responded to.
If all questions are answered adequately, the mark is published in the official gazette and the public has 30 days to oppose the registration.
Mark is issued if there is no opposition or the all oppositions are defeated.
Congratulations you now have a federally registered domain name. This adds more fire power for you in the way of protection. As more extensions to domain names such as .com, .edu, .gov, etc., are created you have a greater chance of keeping those marks from being used.