Trademarking a Domain Name? Sure, why not?
|Written by Beth Hutchens
Hutchens Law Office, PLLC
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Posted: February 4, 2011 @ 9:30 am
Before we get into it, this topic has a tendency to bleed a lot into Internet law and cybersquatting issues, so for the sake of brevity, I’m not going to go that far today. We’re just going to focus on the big picture of domain names as trademarks and assume that there are no cybersquatting, infringement, or other Internet law issues m’kay? So, with that very important assumption in mind, the short answer to whether a domain name can be registered as a trademark is: Yup. For the most part. If you do it right. And follow the rules. Lemme ‘splain.
A domain name is part of what’s called a Uniform Resource Locator (“URL”), which is the address of a site or document on the Internet. A URL is made up of stuff everyone has to include as part of their web address. A URL comprises a “dot” (duh), the “top-level domain” (that’s the “gov”, “edu”, “com”, “org”, or whatever comes after the dot), and the “second-level domain” (the actual name). It also starts with some flavor of transfer protocol (the “http://” part), and “www” (if you don’t know what that stands for, leave the planet Earth immediately). A domain name is used to identify a particular web page in a URL. It’s made up of the first and second level domains. So, in order, starting with the transfer protocol, followed by www, dot, second-level domain, and finally the top level domain, the whole thing looks like this: http://www.uspto.gov. Got it?
So what’s the short answer to the question can a domain name be a trademark? Shrug. Yeah. They are subject to the same rules and standards as all other types of trademarks so the generic transfer protocol, dot, and top level domain can’t function as source indicators. Ever. Trying to claim ownership of these would be like trying to say you have exclusive rights to the words “house” and “street”. Other than that, there is nothing that precludes your domain name from functioning as a trademark.
But remember that a trademark is only a trademark as long as it tells a person who is selling the stuff behind the mark- a “source indicator”. “Source indicator” is just a big fancy pants legalese term that means when a person sees a particular word or picture, they immediately recognize that word or picture to represent a particular brand. There was a time when the word “Nike” did not describe or even imply “sporting equipment” but when you see it today you know that it is a mark for a particular brand of sporting equipment. Or you’re a Greek mythology buff. But I digress.
The TMEP §1215 breaks it down like this: “The mark as depicted on the specimen must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website.” So the take-home is that just like any other kind of trademark, your domain name has to bring your particular brand to the mind of the consumer.
Also, in order to get a trademark, you have to show that you are using the mark in connection with the sale of goods or services. You do this by providing a “specimen” e.g. evidence of that use. A specimen for a mark used in connection with services must show the mark used in the sale or advertising for your stuff. For example, you can use a picture of the goods themselves bearing the mark, a business card showing the mark and identifying the good or service, a sign, a brochure, or an advertisement. But there has to be some reference to the type of goods or behind the mark, not just the mark itself. So if you have a clothing company called CRUMPY CLOTHING, you have a registered mark CRUMPY, and you now want to register www.crumpy.com as a trademark, the specimen you would send in with your application would have to show www.crumpy.com functioning as a separate source indicator for your clothing line.
A common misconception is that a website that just advertises your goods or services can be a trademark. It can’t. The domain has to be a unique source indicator all on its own, meaning it has to tell people what your goods or services are on its own. TMEP §1215.02(a) attempts to clarify this by providing “The mark as depicted on the specimen must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website.” See In re Roberts, 87 USPQ2d 1474 (TTAB 2008) (IRESTMYCASE does not function as mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead). Basically, if your domain name is just an Internet address where your customers can find you, it can’t be registered. It just tells people where to find you. It is merely incidental to your primary business purpose.
So going back to our CRUMPY example, using a specimen consisting of “find us on the web at www.crumpy.com” for your domain trademark registration wouldn’t fly. Contrast with a specimen showing for example, a business card prominently featuring www.crumpy.com as the name under which you are selling your clothes, which would probably work.
Finally, as I alluded to above, you can’t register a descriptive or generic domain as a trademark. Remember that matter merely describing the goods or services on is not registerable. This is especially true when that descriptive term is a domain name. This is because we don’t want to prevent other businesses from using words to describe their business to their potential customers online. A descriptive mark describes an ingredient, quality, characteristic, function, feature, purpose, or use. It doesn’t have to describe all of the characteristics of a product; it just has to describe a particular attribute.
Generic marks are words like CLOTHING, CARS, RESTAURANT, or TOYS. They are just boring old words that tell what the good IS, not where it came from. You can’t register them. Don’t even try. Descriptive marks are words like BLUE, FAST, DIGITAL, or FRESH. They describe what the product does or what it is made of. You can only register these if they have acquired secondary meaning. This means that even though the word describes the product, the consuming public attributes that descriptor to your product and your product only. This is pretty hard to do, but HONEYBAKED and COPPERTONE were able to pull it off.
Remember this: the PTO does not care that you are the registered owner of a domain name. You don’t get a free toaster at the bank and you don’t get a free trademark with your domain registration. If you want to gain trademark protection for it, you have to nicely ask the PTO to give it to you. And you show them you deserve it. A domain name as a trademark is still subject to all the rules and standards as any other kind of trademark and you still have to go through your regular channels to get trademark protection e.g. searching, checking for infringement issues, filing, showing use in commerce, etc. And even though I didn’t address them, don’t forget there are some major Internet law issues you need to contend with before you skip down the domain name trail; especially if you plan to buy it from someone else. But that’s another topic for another day when my brain hurts a little less.
About the Author
Beth is an Intellectual Property attorney licensed to practice before the United States Patent and Trademark Office and the State Bar of Arizona. She received her B.S. in Biological Sciences from CSU, Sacramento and her J.D. from Whittier College School of Law, where she earned a Certificate in Intellectual Property. She enjoys being a solo practitioner in Phoenix, Arizona.