If you are doing e-business on your website, or using the website to advertise goods or services
you offer in the "real world," your domain name is also a trademark. Simply put, a trademark is any
device that distinguishes your product or service from others in the marketplace, or designates their
origin. For instance, say Jonah Ishmael creates an online art gallery that features and sells whale
art by various artists. The art gallery is called Jonah and the Whale and resides on a website with
the domain name ahab.com. Jonah is using ahab.com as a trademark because it is used to bring
visitors to his commercially oriented website. Jonah is also using Jonah and the Whale as a
trademark for the particular product being offered on the website whale art.
Here are some examples of domain names that are also trademarks:
•Amazon.com (online retailer of books, CDs, toys and other items)
•Drugstore.com (online pharmaceuticals sales)
•Nolo.com (online legal information provider and publisher and retailer of legal books, forms and
software).
A domain name isn't always a trademark. If ahab.com were a personal, noncommercial website
with pictures of Jonah's family, poems he writes from time to time and a statement of his political
philosophy, the domain name would not be a trademark. This is because the term ahab wouldn't be
used to identify goods or services or an entity doing business on or off the Web.
Also, if a domain name is the same name by which the product or service is typically described, the
law will consider it "generic" and won't treat it as a trademark. For instance, the domain name
drugs.com uses a word that is the generic term for a class of products. Generic names like drugs.com may make fabulous domain names but will most
likely never receive protection as a trademark because the law does not allow monopolies over
generic terms.
Your Rights As a Trademark Owner
Why should you care whether or not your domain name is a trademark? Because as the owner of a
trademark, you have legal rights that may be very important for your business. If you're the first
person or business to actually use a trademark in connection with the sale of goods or services,
you are the "senior user," and you have priority in case of a conflict with a later user. This is true
whether or not you've registered the trademark with the U.S. Patent and Trademark Office.
Example: Peter develops software for taking orders over the Web and launches the sale of his
Bearware software online. He uses the mark Bearware prominently on his website and as his
domain name, bearware.com. Peter makes his software available for purchase online under the
mark Bearware and through the domain name bearware.com on February 1, 2000, so that is the
date of first use for purposes of trademark seniority. Gail develops similar software and also plans
to market it under the trademark and domain name Bearware.com. But Gail doesn't offer her
software for sale until March 1, 2000.
Because Peter was the first to use the mark Bearware to sell his software, he is the senior user. If
Gail sues him for trademark infringement, he will win the right to continue using the mark for selling
his software and as his domain name.
If you're the senior user, you can go to court to prevent others from using your trademark as a
domain name or otherwise if the use would likely cause customers to confuse someone else's
product or service with yours, or to be confused as to the origin of the product or service.
Example:Gail decides to sell her software under the Bearware mark over the Internet, but she uses
the domain name bareware.com. Peter can sue Gail for trademark infringement, asking the court to
stop Gail from using the Bearware mark and the barewear.com domain name. Peter will make a
number of claims:
1.He is the senior user of the mark Bearware.
2.Gail's use of the same mark to market and sell her software product (which is similar to Peter's)
and her use of a domain name that sounds exactly like Peter's trademark are likely to cause
customers to confuse her product and website with Peter's.
3.Gail's use of the same mark as Peter's for a similar software application is likely to cause
customers to mistakenly believe that both applications come from the same company.
Trademark Registration
Trademark ownership in the United States is based on who is first to use the mark (the senior user).
But you can strengthen your ownership by registering a mark with the United States Patent and
Trademark Office. This same rule applies to domain names that serve as trademarks that is,
domain names that are used as addresses for commercial websites. Generally, you can federally
register a trademark if it is:
•used in interstate or international commerce (which includes virtually all commercial domain
names)
•distinctive to some degree (that is, memorable in some way)
•not scandalous or immoral (four-letter words are verboten) and
•not likely to create customer confusion when compared with other registered marks.
The primary benefits of federal registration are that you are presumed to be the owner of the mark
throughout the whole country, and anyone who infringes your mark will be presumed to have done
it willfully. Infringement means you can collect large money damages, and possibly attorneys' fees,
in a federal court lawsuit. Also, you are entitled to use the "r in a circle" notation next to your name
to inform the world of your mark ownership. Unregistered marks are identified with the less powerful
"TM ."
TipFor a more complete treatment of these and other trademark issues, see Trademark: Legal
Care for Your Business & Product Name, by Stephen Elias and Kate McGrath (Nolo), or visit the
Patent, Copyright and Trademark section of Nolo's free Legal Encyclopedia.
Protection for Unregistered Trademarks
State Trademark Registration Laws. You can register your trademark with your state, but there
are few practical benefits. State registrations were more important when it was common for marks
to be used solely within a single state, which meant they didn't qualify for federal registration.
However, with the advent of the Web, very few marks are now restricted to a state's geographical
borders, and federal registration is definitely the preferred approach.
State and Federal Unfair Competition Laws. Trademarks that have not been federally registered
can still receive certain kinds of limited protection under state and federal unfair competition laws.
These laws bar other businesses from using your trademark in confusing and unfair ways.
Protection from unfair competition is most useful when another business is trying to use your
trademark to create the impression that its business is affiliated with yours. In other words, unfair
competition laws can help you if someone isn't making it clear that they are not connected to your
business.
For more on unfair competition, see Trademark: Legal Care for Your Business & Product Name, by
Stephen Elias & Kate McGrath (Nolo).
Making a Domain Name a Strong Trademark
A distinctive domain name gets more legal protection as a trademark than a non-distinctive one
does, and is usually more effective in the marketplace. The law grants distinctive domain names
used as trademarks greater power to ward off copiers, for three reasons:
Distinctive names are memorable. The more distinctive a trademark is, like Yahoo!, the greater
impression it makes on the customer's memory. This strong impression makes it more likely that a similar trademark, say Yoohoo.com used as a Web portal, will remind the customer of the original
trademark. Needless to say, that can lead to confusion. Customers may think Yahoo! and Yoohoo
are the same brand, or that they are related. They may mistakenly type in yoohoo.com instead of
yahoo.com and go to the wrong website. They may be misled into thinking the reputation of one
applies to the other. In either case, the rightful owner of the Yahoo! trademark may lose traffic, ad
sales and profits.
Similar names are likely to confuse customers. The more distinctive a domain name is, the
more likely it is that potential customers will assume that all products and services carrying that
name originate from one source. For instance, it's reasonable to assume that all insurance-related
services that carry the QuoteSmith mark, as in Quotesmith.com, originate from one company called
QuoteSmith. You wouldn't make the same assumption for several quote services that use "value" in
their names. The greater the likelihood that customers will associate a product or service carrying a
particular name with a particular source, the greater the need to protect them against the confusion
that would likely result if another business used the same or a similar name.
The business probably invested time and money to come up with the name. The more time,
money and creativity that go into making a domain name distinctive, the more sense it makes to
provide the mark with adequate protection. And if the distinctiveness comes from widespread
customer recognition over time, it also makes sense to protect the business goodwill that has been
built up under the mark.
To come up with a domain name that will serve you well as a trademark, follow these rules:
1.Use a name that's memorable or clever.
2.If you use a name that isn't distinctive, promote it so that it acquires a meaning in the
marketplace.
3.Avoid conflicts with names that are already famous.
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