Registration of Domain Name Marks

Although the e-commerce gold rush may have backed off its once frenetic pace, web entrepreneurs still willing to go in search of the mother lode still need to guard one of their most valuable assets – their domain name. One way to protect that name is with federal trademark registration. Not everything with a dot-com on the end of it can be federally registered, however, and in fact, there are a number of considerations unique to registration of domain-name marks. See United States Patent and Trademark Office Examination Guide No. 2-99, “Marks Composed, in Whole or in Part, of Domain Names”.i The following are some of the tips to keep in mind.

Internet and Trademark Basics 

A “domain name” such as YOURDOMAINNAME.COM comprises two parts: the second-level domain name YOURDOMAINNAME (the text to the left of the “dot”), and the top-level domain (TLD) name COM (the text to the right of the “dot”). In addition to the generic TLDs (.com, .edu, .gov, .net, .org, .info, .biz., .mobi, etc.), there are also country-specific TLDs (.us, .eu, .tv, .tm) available.

To federally register a trademark or service mark, the applicant must provide a “specimen of use” showing the use of the trademark or service mark in commerce. Although an intent-to-use application can be allowed based on a bona fide intent to use a mark, the registration certificate will not issue until a Statement of Use with an accompanying specimen of use is filed.

Trademarks and service marks can be registered on the Principal Register or the Supplemental Register. The Principal Register is reserved for marks that meet all the requirements of the Trademark Act of 1946 (hereinafter “the Trademark Act”). Marks that do not qualify for registration on the Principal Register but that are still capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register, as discussed later. Marks registered on the Supplemental Register are only entitled to a few of the benefits that marks on the Principal Register enjoy (such as use of the ® symbol, for example).

The Domain Name Must Be More Than Just an Address

A domain name, like any other name, 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 an indication of where to access a web-site, it is no more an indication of the source of goods than a street address or a telephone number indicates the source of goods 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®), and it is under similar circumstances where Internet domain names can be federally registered.

The specimen of use submitted with the trademark application must also show the use of the proposed mark in a way that is consistent with use as a trademark. For example, a specimen consisting of letterhead or a business card that merely lists the Internet web-site address, does not demonstrate use as a trademark.iiSimilarly, a printout of the YOURDOMAINNAME.COM website homepage that does not show the use of the mark anywhere other than on the Internet address line is not likely to pass muster. On the other hand, a specimen consisting of a printout of an Internet home page or advertising banner referring to the site as the “YOURDOMAINNAME.COM Virtual Store” should suffice.

The Web-Site Must Do More Than Just Advertise One’s Own Products or Services

Advertising one’s own products and services is not a service in the eyes of the USPTO.iii Thus, if Multinational, Inc. (MI) maintains a web-site at MI.COM that merely provides information about all the goods or services that MI offers, MI cannot register MI.COM as a trademark based on that use alone. If, on the other hand, consumers can directly order some of MI’s goods and services from that web-site, then the site provides retail services that may support registration of MI.COM as a 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, (3) not merely an ancillary activity or necessary activity related to an applicant’s larger business. iv Thus, if the web-site offers the real service of providing advertisement for the goods and services of others, then the site would qualify for registration. Marks used by search engines, on-line retailers, virtual malls, and the like, clearly qualify for federal registration. 

The Registered Mark Does Not Have to Include The TLD

In a domain name mark, consumers tend to look at the second-level domain name as the source identifier, not the TLD. Thus, even if the mark is only ever used as YOURDOMAINNAME.COM, YOURDOMAINNAME alone may be registered as the mark. In fact, many internet businesses choose to register both with and without the TLD.

The Rest of The Regular Trademark Rules Still Apply

For those e-businesses who want to register the combination of second-level domain name and TLD, just adding a .com (or .net, .mobi, .us, etc.) after a name does not automatically qualify the name for federal registration. All of the normal trademark rules still apply, only some of which are discussed below.

Marks Not Capable of Registration on the Principal or Supplemental Register  

Trademarks pertaining to certain matter are not qualified for registration on either the Principal or Supplemental Register. Such matter includes “immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”v A mark comprising a name identifying a particular living individual, except by his or her written consent, cannot be registered.vi

Marks that create a “likelihood of confusion”, as defined by the Trademark Act, that “so resemble a mark registered in the Patent and Trademark Office, or a mark or trade names previously used in the U.S. by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion or to cause mistake, or to deceive,” cannot be registered.vii The top-level domain name will be afforded little weight in the determination of whether an application presents a likelihood of confusion. Thus, for instance, the mark YOURDOMAINNAME.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 YOURDOMAINNAME BOOKS owned by someone else.

Marks Not Qualified for Registration on the Principal Register

If the proposed mark is merely descriptive (i.e. BOOKS.COM for a bookstore) or generic (i.e. BOOKSTORE.COM for a bookstore), the mere combination of the descriptive or generic term with a top-level domain name does not create a mark eligible for federal registration on the Principal Register. Merely descriptive marks can be registered on the Supplemental Register, but generic names cannot be registered at all, because a generic name, by definition, is incapable of distinguishing the source of the goods or services. The addition of a non-descriptive term to a merely descriptive or generic second-level domain name, however, does produce a mark qualified for federal registration on the Principal Register (i.e. XYZBOOKS.COM or XYZBOOKSTORE.COM). 

A geographic term indicating the subject of the services rather than the geographic origin of the services is considered merely primarily geographically descriptive, and cannot be federally registered on the Principal Register. Thus, DELAWARE.COM for providing vacation-planning information about the Delaware area over the Internet would not be acceptable. Such a merely geographically descriptive mark, however, can be registered on the Supplemental Register. 

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 only about and the advantages of incorporation in New Jersey would not qualify for federal registration on either the Principal or Supplemental Register.

Conclusion

Because a catchy domain name may be a critical part of the success or failure of an e-business, securing federal trademark registration for that domain name is a component of the business plan that should not be overlooked. In addition to the normal considerations for registering a trademark, making sure that the domain name is actually used as a mark, that the use is of a nature that supports registration, and that the specimen of use is adequate, can help make the journey to federal registration smoother.


i Viewable online at http://www.uspto.gov/web/offices/tac/notices/guide299.htm

ii In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).

iii In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970).

iv In re Canadian Pacific Limited , 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); Trademark Manual of Examination Procedure §1301.01(a).

v15 U.S.C.A. §1052(a)

vi 15 U.S.C.A. §1052(c)

vii 15 U.S.C.A. §1052(d)

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