Registering a trademark for your product or service is a common practice among business owners to protect your brand and intellectual property from infringement. But in the digital marketplace, the internet address (or domain name) of your website is just as important, if not more important, than the name on your storefront or products. It might seem reasonable to seek similar legal protections for your domain name as for anything else you sell. So can you trademark a domain name?
When Does a Domain Name Qualify as a Trademark?
The purpose of registering a trademark is to allow a trademark owner exclusive use of a particular product or service mark, such as a name, word, phrase, symbol, logo, sound, or other identifying mark, in order to distinguish their offering from those of their competitors. In order for a domain name to qualify for trademark protection, it must pass similar tests as those applied to marks in the physical realm.
Generic words or phrases tend not to pass muster with the United States Patent and Trademark Office (USPTO) for mark registration. Just calling your products “Pet Supplies” or your services “Pool Cleaning” would not be eligible for trademark protection. The same applies to domain names. A trademark application for “Petsupplies.com” or “Poolcleaning.com” would almost certainly be rejected.
Protecting Your Domain Name as a Trademark
In order to obtain trademark protection, a given mark must be unique, not generic, and not confusingly similar to already registered trademarks, or any pending trademark applications. You must also be currently using the trademarked product or service (or domain name) in actual commerce, or show intent to use the mark within six months of receiving a Notice of Allowance (NOA) from the USPTO.
Simply using the mark in commerce without registration does afford you some protections under trademark law. However, conflict may arise if someone else decides to start using your mark on their own goods or services, or they apply for federal trademark registration prior to you submitting an application. In that case, if you were to dispute their application, the issue may come down to a matter of who was using the trademark first.
Difficulties in Obtaining Trademark Law Protection
The main test any trademark must pass in order to be registered is uniqueness, or distinctiveness in USPTO parlance. Generic descriptive terms or surnames are typically not granted trademark registration. An easy way to distinguish your trademark is by making the terms or symbols arbitrary, suggestive, or fanciful– that is, invented specifically to be distinct and trademarkable.
For domain names, the root name should be unique– that is, the primary web address without the “www.” or “.com/.net/etc.” portion (the so-called top level domain). Domains such as “Airbnb.com” or “Vrbo.com” qualify as either suggestive or fanciful, and easily approved for trademark protection. However, some descriptive terms have come to be so closely associated in the mind of the public with a particular company’s offering that they altered the generic meaning of the word itself to refer to that company.
In one famous example, the domain name “Booking.com” was initially rejected for trademark registration because of the generic nature of the descriptive combination. The company appealed the decision all the way up to the U.S. Supreme Court, where they were able to demonstrate that consumers perceived the term as a famous brand name specific to their company and website, making their domain trademark protectable.
Federal Registration of Your Trademark
There are a few simple steps that any individual or company must follow in order to register a mark, or trademark domain name. You must file an application with the USPTO, following all the rules and procedures as a physical mark.
- Conduct a trademark search using the USPTO’s online Trademark Electronic Search System (TESS) and other online databases
- File a trademark application and pay the applicable fees
- Wait for registration or an Office Action from the examining attorney in case of a rejected application or objection by a third party
Managing Domain Name Disputes
It’s a fact of life that some unscrupulous domain name registrants will have registered the domain name that pertains to your business, related terms, or misspellings of your domain, in order to purposefully draw traffic away from your website, or force you to pay them to release the domain. Fortunately, ICANN is an organization in charge of domain name registrations worldwide and it has a Uniform Domain Name Dispute Resolution Policy (UDRP) for cybersquatting disputes to protect trademark owners and business owners in situations like this. If you can prove that you were using the domain name in commerce prior to the bad faith registration, you may be able to obtain a favorable outcome in arbitration, or settle the matter in or out of court.
Consult an Experienced Trademark Attorney
At the law firm of Allen, Dyer, Doppelt & Gilchrist, our experienced, knowledgeable team of trademark attorneys can help you navigate the complex landscape of trademark domain registration. Contact us today to find out how we can help!
About the Author
Matthew McKinney practices in all areas of intellectual property, representing a wide range of clients in connection with the acquisition, transfer, enforcement and defense of their intellectual property rights.