To effectively address the question, “Can you trademark a domain name?” it’s essential to first understand the concept of a trademark and the protections it offers. A trademark is one form of intellectual property that identifies your source of goods or services, distinguishing your brand from others. The popular clothing and sports apparel company Nike ® is one of the best examples of a company that has built brand recognition for their consumers through their trademarks. Instantly, a consumer can tell that a clothing item originates from Nike ® from one of their trademarked logos or tag lines.
A domain name cannot be protected as a trademark merely because it is your address on the Internet. To receive trademark protection on any name, slogan, logo, or domain name, you the must use the mark in connection with the goods or services offered. This requirement is known as “use in commerce.” This requirement seeks to prevent “trademark trolls” from registering trademarks with no intention of ever using them in commerce but for malicious purposes such as selling the trademark for a profit to one with a legitimate intention to build a brand.
To use a domain name “in commerce,” the mark must be clearly visible in connection with the brand’s goods or services. The US Patent and Trademark Office (USPTO) lists several ways to satisfy the proof of use requirement.
In addition to using the name in commerce, the domain name must be used in a way that distinguishes your goods or services from those of others. The most important consideration during the substantive examination of your trademark application for an examiner at the USPTO is whether there is a “likelihood of confusion” with an existing or pending trademark.
A likelihood of confusion exists between trademarks “when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.” The examiner will first take into consideration the literal elements of a mark. The literal element of a domain name would be the name’s spelling. When comparing your applied for trademark with that of other trademarks, an examiner will not only try to identify identical matches but any mark that is similar in “appearance, sound, connotation, and commercial impression.”
In conjunction with a comparison of the literal elements, an examiner will also consider the “relatedness of the goods or services as described in the application and registration(s).” A basic requirement of trademark applications is to claim a class or classes that embody the goods or services to be offered. Clothing, for instance, will fall into class 025. The Trademark ID Manual outlines the 45 available classes under which your goods or services may fall.
One benefit of the class system is that brands with identical names can coexist so long as their goods or services are so unrelated as not to confuse a consumer. Take the brands Dove ® and Dove ®, for example. One is for chocolate/food products, while the other is for bath care products. Though both products share the same “Dove” name, the claimed goods are in unrelated classes of goods. While both names have the same “appearance, sound, and connotation,” both are registered trademarks owned by different companies and the goods each offers are so unrelated as not to confuse a consumer.
Assessing the Eligibility of Your Domain Name
Determining the availability of your desired domain name may seem like the logical first step. However, checking for trademark availability will yield more critical information and potentially save you money and time. Domain name registrars will grant you a domain name if there is no identical match. However, as discussed above, the USPTO has a much more stringent likelihood of confusion analysis to ensure there are no confusingly similar marks.
Thus, performing a trademark conflict search before obtaining a domain name will outweigh the time and costs of rebranding in the event your trademark application receives an office action rejection. You may search the USPTO’s site for registered trademarks and pending trademark applications here.
When you are ready to search for your desired domain name, look here for a complete listing of accredited registrars. A typical Internet domain name, http://www.yourcompanyname.com, is comprised of both the secondary level domain (SLD), i.e., “yourcompanyname,” and a top-level domain (TLD), i.e., “.com.” There are many more unrestricted TLD’s if “.com,” or your preferred choice, is unavailable. You can register domain names for any number of years, in one-year increments, and for a maximum of ten years at any given time. It is up to each registrar to determine the term length it offers registrants.
Domain Names as Trademarks: Successful Examples
In a 2020 Supreme Court case between the USPTO and Booking.com involving whether “BOOKING.COM” was deemed to be too generic to warrant trademark protection, the Court held for Booking.com that combining a generic term, “BOOKING,” with the “.com” TLD is not automatically generic.
Under the Lanham Act, 15 U.S.C. § 1051 et seq, generic terms are not eligible for trademark protection as they refer to a general class of products rather than a unique source. Thus, “BOOKING.COM” as a trademark can be protected as it identifies not the general service of travel bookings but a distinguishable source of said services. United States PTO v. Booking.com B.V., 140 S. Ct. 2298.
The decision set a precedent for the possibility of trademarking a generic word combined with a generic TLD if it creates a distinctive brand and acts as a source indicator. Other prominent examples of successfully registered and enforceable trademarks of domain names include “HOTELS.COM” and “MATCH.COM.”
Preparing and Submitting a Trademark Application
One of the major advantages of filing your trademark application with the USPTO is that it will provide nationwide federal trademark protection, ensuring you have exclusive rights to use your trademark in all 50 states and U.S. territories. While state trademarks offer limited protection within the borders of their respective states, one disadvantage is that the state offices will not substantively examine the applications for any likelihood of confusion with other marks outside that specific state before being procedurally registered. We’ve put together a breakdown on the differences between state vs federal trademarks here.
Similar to the availability analysis used by domain registrars, state trademark searches are limited to searching for identical marks. Thus, just because you registered a state trademark does not mean the mark will be available for federal registration. When registering a trademark for a domain name, there is a presumption that you will sell the goods and services offered through the domain nationwide. As such, it is imperative that you apply for federal registration protection trademark through the USPTO.
If you intend to sell your goods or services outside the United States, consider filing an international trademark application. While each country has its own trademark laws and specific filing requirements, several multinational filing systems, such as the Madrid Protocol, exist to enable applicants to file their application through the USPTO and elect which countries or regions they desire for protection.
These multinational filing systems traverse the requirement for retaining local counsel before filing in each elected country. A granted application with the Madrid Protocol can gain you trademark protection in all 112 member countries. Similarly, an applicant can file one application with the European Union Trademark (EUTM) System and receive protection in the 27 different EU member countries.
One of the advantages of international trademarks is the trademark owner’s ability to register their trademark with various foreign customs offices to help identify, seize, or otherwise prevent the distribution of counterfeit products. Domestically, U.S. Customs and Border Protection (CBP) is a division of the United States Department of Homeland Security and plays a vital role in policing and seizing counterfeit products from entering the U.S. Any trademark owner can record their trademark with the CBP database by paying the initial filing fee. Other countries have similar enforcement offices.
The lifespan of your trademark protection is potentially indefinite so long as you are timely in paying your trademark’s maintenance fees and you can show continued use of the mark in commerce.
How much does it cost to trademark a domain name?
We highly recommend hiring an experienced attorney to handle the prosecution and maintenance of your trademark matters. Shopping around will yield a range of quotes for submitting a trademark application, upwards of $2,000+. Some firms or companies may bill hourly, while some will package costs together more transparently.
At The Rapacke Law Group, we offer a money-back guarantee and fixed-fee price on all U.S. trademark applications of $1,750. This cost includes all attorneys’ fees necessary to prepare the application and conduct a thorough conflict search for your desired mark before applying. The price further includes all necessary filing fees with the USPTO as well as any office action responses should your application require.
Overcoming Potential Obstacles and Oppositions
Infringement of a trademark may have devastating effects on your company in both litigation costs and re-branding efforts. Trademark infringement is the unauthorized use of another business’s trademark. Such unauthorized use can be in connection with a good or service offering that has the potential to cause a misunderstanding, manipulation, or even confusion pertaining to the source of goods or services.
If a business owner believes someone has infringed their trademark, they can take legal action to mitigate the damages to their business and brand by filing a suit in federal court. Proving infringement of a trademark can allow the plaintiff to prevent the defendant from utilizing the trademark in question in any manner. Furthermore, there can also be an opportunity to recover monetary damages such as attorneys’ fees and disgorgement. Disgorgement is an equitable remedy requiring an accounting of the defendant’s profits resulting from the infringement of the successful Plaintiff’s mark to be returned to the infringed party.
A trademark infringement lawsuit could be the financial ruin of your business, especially if you are operating in the red. As the plaintiff in a trademark infringement lawsuit, you can expect to spend anywhere between $10,000 and $750,000. If you’re the defendant, you may incur additional costs in financial damages and, in some cases, attorneys’ fees. That is why conducting a thorough conflict search is most important before applying for trademark protection.
There are easier and cheaper routes if you are proactive about enforcing your trademark. One way to enforce your trademark without going to federal court is by filing a Notice of Opposition. You may file a Notice of Opposition when there is a pending published trademark application you believe would infringe on your trademark. If the infringer has already registered a confusingly similar trademark, you can file a Petition to Cancel.
Both the Notice of Opposition and the Petition to Cancel go through the Trademark Trial and Appeal Board (TTAB). The process is faster and cheaper than filing a suit in federal court. However, the Trademark Trial and Appeal Board does not award monetary fees nor attorney’s fees. If you’re looking to recoup lost profits, attorney’s fees, and damages, then federal court is your only option.
Can Someone Obtain a Domain with a Similar Name as My Trademark?
Yes. Obtaining a domain name does not secure federal trademark protection. Similarly, securing trademark protection does not guarantee the availability of a domain name. Domain name registrars operate on a first-come first-served bases, so time is always of the essence. However, there are procedures in place to recover a domain name should someone beat you to the punch.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) was established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes concerning Internet domain names. ICANN is a keeper of a secure, stable, and interoperable Internet and promoter of competition and policy developer on the Internet’s unique identifiers. The UDRP provides a course of action in cases of abusive registrations.
An abusive registration is registering a domain name for malicious purposes as defined by the World Intellectual Property Organization (WIPO). “Cybersquatting” is one such abusive registration. “Cybersquatting occurs when a person registers a domain name containing a trademark without a legitimate purpose but to re-sell it to the trademark owner for a profit.
To recover a domain name under the UDRP, “trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration.” A registrar may cancel, suspend, or transfer the domain name if the trademark owner succeeds in their course of action. Court actions may yield monetary damages for the aggrieved party. However, the process is expectedly slower and more expensive than alternative dispute resolutions such as arbitration or negotiation.
In the case of an alleged abusive registration, however, the UDRP provides a much quicker route, referred to as the UDRP Administrative Procedure. Under this procedure, the trademark owner must submit a complaint to an ICANN-approved dispute-resolution service provider. An administrative panel supplied by the dispute-resolution service provider will hear the dispute. It is the panel’s job to decide whether to transfer or cancel the domain name.
To prevail in such a proceeding, the trademark owner must show that the domain owner has no legitimate interest in the domain name and that the owner obtained it in bad faith. In this context, “bad faith” is with the intent to profit off the similarity between the domain name and trademark. WIPO advises that such a procedure takes about 60 days from the time the office receives your complaint until completion. See WIPO’s guide to the UDRP for more definitions and information regarding the nuances of a UDRP proceeding.
Contact an experienced trademark attorney to help determine if there is a legitimate cause of action for a potentially infringing domain name. Your attorney should be able to guide you through the dispute resolution process and correspond with the necessary or adverse parties, so you don’t have to. Our firm offers free consultations to help deduce the best course of action for protecting your intellectual property and pursuing those who seek to profit from infringing upon it.
Can Domains be Copyrighted?
The US Copyright Office (USCO) defines a copyright as “a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression.” Examples of works eligible for copyright protection are artwork, business presentations, music lyrics, or other forms of creative work. As such, a domain name is not an original work that is eligible for copyright protection.
Protect Your Domain Name as a Trademark
Contact us today. At The Rapacke Law Group, we offer free consultations to help answer any of your questions regarding protecting your intellectual property. We have limitless experience helping startups secure IP protections so they can focus on building their new brands, all at a fixed cost! Feel free to schedule a consultation for a time that works best for you and your team, or call us anytime at 954-951-0154 to speak with one of our experienced team members. We look forward to hearing from you.