Registering for a Domain Name Trademark: What You Should Know
As a small business owner, you may know how to protect your business name. You might want more information on how to protect your domain name. Often, once a business owner has completed the trademark registration for their brand name, they will want to have ownership of using their brand name as a domain name. Federal trademark registration provides extra protection and a legal presumption of ownership.
Let's dive into the key points of domain name trademarks and their significance for entrepreneurs.
What is a domain name?
A domain name is a unique name associated with an IP address. Computers recognize the name and connect users to the IP address associated with the domain name. For example, "Findlaw.com" is a domain name. FindLaw is the unique name, and .com is the suffix or the last part of the domain name. This is also called the top-level domain (TLD). There are many suffixes available, including:
- .org: Nonprofits
- .gov: Government agencies
- .edu: Educational institutions
- .biz: Businesses
- .travel: Travel industry
- .mil: U.S. Military
- .net: Network-related entities
To view more suffixes, visit the list of top-level domain names maintained by the Internet Corporation for Assigned Names and Numbers (ICANN).
When does a domain name qualify as a trademark?
A trademark is a name, symbol, logo, or other device to identify and distinguish a product or service from competitors. Only some domains will qualify for trademark protection. The use of common or generic names will not usually meet the criteria of a trademark. Domain name trademark applies to a domain name if the following conditions are met:
- It is distinctive or its distinction results from consumer association of the name and the Internet business
- The domain name's owner was the first to use it in association with the sale of goods or services
When trademark law protects a domain name, the owner has the right to prohibit the use of similar or misspelled names by others.
How do I check the availability of a domain name?
Because a domain name must be unique, it is only available to one user. Before you trademark a domain name, you need to conduct a trademark search. This trademark search ensures the desired domain name is available before proceeding to the trademark application process.
You can determine the availability of a domain name by searching the website of an ICANN-approved online registrar of domain names. The websites InterNIC and ICANN list the approved registrars.
If a domain name is unavailable, it is easy to determine the owner. A search on a site like www.godaddy.com will retrieve the owner's contact information. In some cases, it may be impossible to locate the owner when the applicant provides false information to the registrant.
What is cybersquatting?
A cybersquatter is a person who registers, traffics, or uses a domain name with the intent to sell it for profit. You may get the domain name when registered in bad faith. You can take two legal actions: sue the squatter under the Anti Cyber-squatter Consumer Protection Act (ACPA) or have the case arbitrated by ICANN. Arbitration is far less costly than suing the cybersquatter.
How do I register a domain name trademark?
Registering a domain name as a trademark involves a two-step process. First, you must register the domain name with a domain registrar. Second, you must file a trademark application with the USPTO.
Suppose a domain name is available and is not a protected trademark of another company engaged in a similar goods or services business. In that case, an applicant can register for the domain name. ICANN provides a list of approved domain registrars.
The trademark application is filed with the USPTO using the Trademark Electronic Application System (TEAS). The applicant will need to pay a filing fee and provide contact information.
Once registered, the domain name owner has the exclusive right to use the domain address. Still, this right alone does not prohibit others from using the name for a business or product unless the company name is trademarked.
How are conflicts resolved between domain names and an existing trademark?
Suppose a company already owns a federally registered trademark. In that case, 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: Having a similar name might be basis for infringement. Suppose another company uses a domain name similar to a trademark and engages in a business providing similar goods or services. In that case, 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.
Can you acquire a domain name trademark name for future use?
Yes. The basis of a federal trademark application requires that the applicant has already used the trademark in commerce or has a bona fide "intent to use" it. After the U.S. Patent and Trademark Office (USPTO) approves the mark, the applicant must use it within six months or request an extension. Registration will not be granted if the applicant fails to use the mark within the time limit.
Need Legal Advice? Contact an Intellectual Property Attorney.
Contact a trademark attorney if you need help with the domain trademark registration process. A trademark attorney will help you avoid trademark infringement, protect your trademark rights, and navigate the United States Patent and Trademark Office system.
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Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.