Domain Names Are Not Trademarks

November 20, 2013
Domain names

[Reprinted with permission from Brandaide]

There is often confusion amongst clients and their advisers as to the difference between registration of a domain name and registering a trademark or service mark. Domain names are not trademarks without proper use and one that is distinctive. Since many URLs, also called domain names, describe the goods or services, they cannot function as a trademark or service mark in and of themselves. A trademark is a word, symbol, slogan, 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 continuous use of your mark for goods or services you sell, there are no trademark rights.

Domains names are not trademarks. A domain is nothing more than an Internet address, much like the street address where you live. However, there have been legal decisions holding that a domain name which is the same orsimilar to an existing trademark can infringe a trademark through the creation of “initial interest confusion.”®  Initial interest confusion occurs where a domain includes a trademark in its domain for similar goods or services, or a trademark is used by a competitor in its metatags to cause their site to pop up when the mark is typed into a search engine. However, descriptive domains that describe what is being offered for sale at the site are examples that domain names are not trademarks. A good example is sells hotel rooms. Great for SEO but not for building a brand.

Without a federal registration your chances of filing a complaint and being taken seriously are greatly diminished. 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.

After you have registered your domain name, as long as you renew it properly, others cannot use it as their web address. However, that doesn’t mean you can register it as a service mark that is protected by the federal government.

A simple rule of thumb is that if your domain is descriptive of what sold at the site, chosen for search engine ranking, it will not be protectible as a trademark.

However, if you  provide services online, the Trademark Office will likely 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. That said, a domain such as Expedia can be registered and protected because the owner provides services through the website, and most important, because it is distinctive, not descriptive.

Other examples of registrable types of websites include online banking, retail, real estate marketing services with virtual tours and chat rooms. In short, if you are marketing goods or services on the Internet, and your domain is more than a general 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 called goodwill. [Brandaide]