Understanding and Using Trademark and Domain Name Registrations : Part 1
This is part one of a two part blog about the differences between trademarks and domain names, and the commercial importance of registering both. Look for the campanion piece soon to follow, that will explain the situations where a domain name might conflict with another business’ trademark.
Let’s begin by comparing the purpose and function of trademarks with the purpose and function of domain names.
A trademark is any word, phrase, symbol or design which, when used in commerce, serves to identify and distinguish the goods or services of a particular business to the public. In other words, a trademark allows consumers to immediately distinguish the goods and services of one company from the goods and services of another and serves to elicit expectations based on the consumer’s previous experiences with the trademark owner.
A properly obtained trademark gives its owner the ability to prevent the use or registration of a confusingly similar trademark by another party offering the same or related goods and services.
Once issued, a federal trademark registration is ultimately valid for ten years and may be renewed every ten years, as long as the owner continues to use the trademark in connection with the goods and services listed in the trademark registration and files the proper maintenance documents at specified intervals.
Domain Name Basics
A domain name, in contrast, is one part of the Uniform Resource Locator (URL) which internet servers use to direct users to the specific website they want to access. A domain name is like a street address for a specific website on the Internet.
To obtain a domain name, an individual or company registers an available name with an accredited registrar of the Internet Corporation for Assigned Names and Numbers (“ICANN”). There are many such registrars, including GoDaddy, NameCheap, iPage, BlueHost, Name.com, and Register.com to name a few.
Domain name registrations can be completed quickly by choosing a name, confirming it or a similar version is available for sale, completing an application, and purchasing the name. This registration process often can take only a few minutes to facilitate so long as the name you wish to use is not already registered by another party. Domain names can be registered for differing periods of time including 1 year, 3 years, 5 years, or 10 years depending on the preferences of the registrant. Domain names must also be renewed; otherwise they will expire.
An example of a trademark is NIKE, while an example of a domain name is nike.com. The trademark identifies the company giving the consumer immediate information on the quality of the trademark owner’s goods, while the domain name allows users to access the trademark owner’s website located at www.nike.com.
What a Trademark Protects
Trademark protection generally comes in two forms, one stronger than the other.
To obtain common law rights in a trademark, a business must use the trademark in connection with the sale of goods or the rendering of services. As stated above, trademark rights give the owner the ability to prevent the use or registration of a confusingly similar trademark by another party offering the same or related goods and services. These rights, however, will be limited under the common law such that the owner will only have trademark priority and protection in the geographic area where they use the trademark. If another company begins selling similar goods or rendering similar services under the same or a confusingly similar trademark in another geographic region, both companies could be entitled to ownership of the trademark in their specified region.
To obtain a stronger level of protection and ownership for a trademark, one must apply for and receive a federal trademark registration from the United States Patent and Trademark Office (“USPTO”). A federal trademark registration provides nationwide protection, in contrast to common law protection.
If use of a trademark has already begun, obtaining a federal trademark registration takes an average of nine months from the filing date of the application. Trademark applications undergo a very thorough examination process that can involve complicated legal questions relating to trademark priority, use, functionality, likelihood of confusion, descriptiveness, geographic descriptiveness, or deceptiveness of a trademark. These issues are often resolved by formally presenting procedural or substantive legal arguments to USPTO Examining Attorneys.
In contrast to domain names, merely because a trademark is not already registered by anyone else does not mean someone can simply snatch it up and receive a registration. The legal technicalities which govern trademark law put constraints on the USPTO such that the office must thoroughly review each trademark application for errors and proper compliance with trademark laws.
The Difference Between Trademark and Domain Registration Protections
Understanding the differences between trademark ownership and domain name ownership can clarify what kind of protection your business enjoys or lacks. At the most basic level, federal and common law provide protection to the owner of a trademark such that no one can use a trademark on similar goods or services which is likely to cause confusion with a protected trademark. A federal trademark registration granted by the USPTO goes beyond common law protection providing the owner with substantial benefits such as nationwide priority, the right to sue in federal court for trademark infringement, ability to obtain attorney’s fees in certain cases, right to use the “®” registered symbol, ability to receive protection from the United States Customs and Border Patrol preventing potentially infringing goods from entering the United States, and a basis for a foreign trademark registration.
Businesses frequently choose to register their trademarks because of the recognized long term benefits trademark registration has for business growth as acquiring a federal trademark registration often increases brand desirability and value. This asset is often a key component when businesses look to execute mergers or acquisitions. Moreover, a trademark registration can better facilitate trademark licensing or franchise development opportunities for businesses looking to expand.
Registration of a domain name allows the registrant control over the website users will see when they access the domain name. Securing a domain name will secure the business the ability to direct their desired Internet traffic to their webpage. Many business operators mistakenly believe securing and registering a domain name automatically confers the protections and benefits of a trademark. Only under limited circumstances will use of a word or phrase in one’s domain name also end up providing trademark protection. Only if the word or phrase from a domain name is prominently displayed on a website in connection with goods or services therefore acting as a source identifier, will a domain name also potentially function as a trademark, providing the enhanced benefits and rights associated with trademark protection.
Look for our next post: When a Domain Name Incorporates Your Trademark, coming soon!
For more information, contact the trademark attorneys at the law firm Schiffrin & Longo, P.C.
Disclaimer: The information in this blog post (“Post”) is provided as general information and for educational purposes. This Post does not provide legal advice and may not reflect the current law in your jurisdiction. No information contained in this Post should be construed as legal advice from the author, nor is it intended to be a substitute for legal counsel on the subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country, or other appropriate licensing jurisdiction.