Trademarks in the .COM Millennium

If you are considering forming your own web-based, e-commerce business, or merely developing a web-site to support your existing business, you may wish to consider trademark protection for that catchy Internet domain name that you hope will entice the world to beat a path to your web-site. Not everything with a .COM on the end of it can be federally registered as a trademark, and there are a number of considerations unique to domain name trademarks to keep in mind.

THE DOMAIN NAME MUST BE MORE THAN JUST AN ADDRESS 

A domain name, like any other term, can be registered as a trademark or service mark only if it identifies and distinguishes a source of goods or services. If the domain name merely serves as a web-site address, it no more indicates the source of goods than does a street address or a telephone number for a standard brick-and-mortar business. In certain situations, however, the phone number or the address is actually used as a mark (i.e., 1-800-COLLECT®). It is in similar situations where the Internet domain name can be federally registered. 

The specimen of use submitted with the trademark application must show the use of the proposed mark as a trademark or service mark. For example, a specimen consisting of letterhead or a business card that merely lists the mark as an Internet web-site address will not suffice. On the other hand, a printout of an Internet home page referring to the site as the “CATCHYNAME.COM Virtual Store” might suffice. As a general rule, a trademark should be used as an adjective that modifies a generic name or a product or service category (i.e., AMAZON.COM® Books).

THE WEB-SITE MUST DO MORE THAN JUST ADVERTISE YOUR OWN PRODUCTS OR SERVICES

Advertising one’s own products and services is not a service in the eyes of the U.S. Patent and Trademark Office. Thus, for example, Multinational, Inc. (MI) with a web-site at MI.COM that merely provides information about the goods or services sold by MI cannot register MI.COM as a trademark based on that use alone. If, on the other hand, goods and services can be ordered from that web-site, then the use supports registration of the service mark. In general, to qualify as a service in the eyes of the USPTO, the service must be (1) a real activity, (2) for the benefit of others, and (3) not merely an ancillary activity or necessary activity related to an applicant’s larger business.

THE REGISTERED TRADEMARK NEED NOT INCLUDE THE TOP-LEVEL DOMAIN NAME

In a domain name mark, the consumers tend to look to the second-level domain name as the source identifier, not the top-level domain name. Thus, even if the specimen of use lists the mark as CATCHYNAME.COM, you may still just apply for CATCHYNAME as the trademark. For example, the owners of the recently well-advertised virtual pet store located at www.petopia.com have filed applications for both the marks PETOPIA and PETOPIA.COM.

THE REST OF THE REGULAR TRADEMARK RULES STILL APPLY

Even if all of the above considerations are satisfied, just adding the .COM (or .NET, .ORG, etc.) after a name still does not automatically qualify the name for federal registration. All of the normal trademark rules still apply. Of special interest among these rules are the following.

Marks that present a likelihood of confusion with respect to another mark cannot be registered. The top-level domain name will be afforded little weight in the determination of whether an application presents a likelihood of confusion. Thus, for example, the mark CATCHYNAME.COM for retail bookstore services offered on the Internet is not likely to be allowed registration over a pre-existing brick-and-mortar bookstore having the name CATCHYNAME BOOKS.

Merely descriptive (i.e. BOOKS.COM for a bookstore) or generic (i.e. BOOKSTORE.COM for a bookstore) marks cannot be registered on the Principal Register (but merely descriptive marks may be registered on the Supplemental Register). Certain marks not qualified for registration on the Principal Register, but which are still capable of distinguishing the applicant’s goods or services, may be registered on the Supplemental Register. Marks on the Supplemental Register, however, are not entitled to all of the benefits of marks on the Principal Register. The addition of a non-descriptive term to a merely descriptive or generic second-level domain name, however, may support registration on the Principal Register (i.e. XYZBOOKS.COM or XYZBOOKSTORE.COM).

Marks that are deceptively misdescriptive, such as a deceptively geographically misdescriptive mark, cannot be registered on either the Principal or Supplemental Register. Thus, for example, DELAWAREINC.COM for a web-site providing information about and the advantages of incorporation in New Jersey cannot be federally registered. 

Because of the need to stand out in a sea of domain names, the importance of a catchy domain name to any Internet-based business cannot be underestimated. Securing federal trademark registration for the domain name should, therefore, be a key part of the business plan. 

Rex A. Donnelly is an associate with Ratner & Prestia specializing in all areas of intellectual property. He can be reached at Ratner & Prestia’s Wilmington office at 302-479-9470, at the Valley Forge office at 610-407-0700, or by e-mail at radonnelly@ratnerprestia.com.