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Don’t Confuse Trademarks With Domain Names—They May or May not be Both!
© Cheryl Hodgson 2007 | Posted on September 15, 2007
A trademark is a word, symbol, slogan, and even a sound, that is used to identify and distinguish your goods and services from those of your competitors. Rights in a trademark are secured and ultimately maintained only by continuous use in commerce of the mark > >for specific goods and services. Without use for particular goods or services, there are no trademark rights established.
Domain Names Can Become Trademarks or Service Marks.
In the internet age, there is constant confusion amongst clients and their advisors as to the difference between registration of a domain name, and a trademark or service mark.Since many domains describe the goods or services, they can not function as a trademark or service mark in and of themselves.
A domain name is an internet address, and nothing more.There have been some legal decisions holding that a domain name which is the same or similar to an existing trademark can infringe a trademark through creating “initial interest confusion.”This occurs where a domain includes your trademark in its domain for similar goods or services, or your trademark is used by a competitor in its “meta tags” to cause their site to pop up when your mark is typed into a search engine.Without a federal registration your chances of being taken seriously are greatly diminished.
Trademark registration is available for domain names used to promote goods and services on the Internet.Companies often invest huge amounts of money creating and promoting their websites but don’t adequately protect their domain names, believing that simply securing a domain name registration is sufficient.
The rules of what can and can’t be protected are complex and an attorney’s guidance can be invaluable.Here is a brief overview:
Registration of domain names as service marks and trademarks
When you’ve registered your domain name, as long as you renew it properly, others cannot use it as their web address.But that doesn’t mean you can register it as a service mark that’s protected by the federal government.
When can a domain name also be a federal service mark?
The simple rule: If your website is just an informational site, your domain name can’t be registered as a trademark.However, if you use your site to provide services online, the Trademark Office will grant registration.
An informational site is one that tells people about you and what you do or sell but doesn’t actually deliver services or products online.Example:An attorney sought to register WWW.EILBERG.COM. His site was simply a showcase for his services and registration was refused.
However, a domain such as EXPEDIA.com can be – and is – registered and protected because the owner provides services through the website.
Other examples of registerable types of websites>
Online banking services
Online chat rooms
Online retail services
Real estate marketing services with virtual tours
Hosting websites of others
In short, if you are marketing goods or services on the internet, and your domain is more than a descriptive term, you should consider a federal registration to act as a shield and sword, and as an asset of your business, symbolizing the very real, albeit intangible asset, “good-will.”
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