Trademark Domain Name: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
To protect your brand from infringement, you may want to trademark your domain name in addition to a logo, slogan, or design.4 min read
2. Should I Trademark My Domain Name?
3. Why are Trademark Domain Names Important?
4. Reasons to Trademark Your Domain Name
5. Reasons Not to Trademark Your Domain Name
6. Why Most People Don't Trademark Their Domain
7. Common Mistake
8. Frequently Asked Questions
9. Get Expert Advice
Updated July 13, 2020:
What is a Trademark Domain Name?
The Ninth Circuit U.S. Court of Appeals recently ruled that a business must use its domain name to sell goods or services in order to protect the name — even if a competitor starts to use the name after you registered the domain. In other words, merely reserving a domain name isn't enough.
Without the domain name, a computer would have no idea where to look for a web page, and e-mail routers would not be able to send email. Of course, domain names are more than just addresses, since they can be selected by the "addressee" and are usually closely associated with a particular service or product.
Should I Trademark My Domain Name?
To protect your brand from infringement, you may want to trademark your domain name in addition to a logo, slogan, or design. Registering a domain with a service like GoDaddy or Bluehost does not give you trademark rights. It simply identifies your website and will not prevent others from using the name. If you trademark your domain name, your domain will have protection under the law.
Why are Trademark Domain Names Important?
Domain name disputes can arise, so having protection under USPTO law is beneficial. Take Hasbro Games, the creators of the famous board game Candy Land. They had to sue for the domain name candyland.com, as it belonged to an, ahem, adult entertainment company using the same name. Hasbro won on the basis of trademark dilution, saying that the domain undermined Hasbro's own trademark and confused customers. You don't want someone else's domain that is identical or even similar to yours to confuse, or in this case offend, your audience. Trademarking your domain name is an important part of protecting your intellectual property.
Note that your domain name must follow USPTO rules. For example, you can't use generic words in your trademarked domain name. The domain should function as a "source indicator." It must convey to whoever sees the URL what products or services are behind the name.
Reasons to Trademark Your Domain Name
- Maintain Your Rights — If your domain name has a trademark, the URL has protection under the USPTO law. There are legal ways for you to stop another company from using your trademark.
- Protect Your Image — When a company is selling a lower quality product that consumers might confuse with your merchandise, your image is at risk. Protecting your domain allows you to maintain control of your online image.
Reasons Not to Trademark Your Domain Name
- Infringement — If you register a domain name without checking if there is a similar name already registered, you could infringe upon another company's trademarked domain name. A lawsuit involving trademark infringement could cost you $100,000 or more. Before registering your domain name, use the trademark tools on the USPTO website to find out if a domain name like the one you want is already trademarked.
Why Most People Don't Trademark Their Domain
Most people, including domain name registrants, are unaware of:
Federal trademark laws.
The consequences of trademark infringement.
- The tools needed to find out if domain name might infringe on a trademark.
If you trademark your domain name, you have legal protection if someone uses your trademarked name. You can sue the other company and recover financial losses you might have incurred. If you register your domain names, but don't use your website to sell your products and you don't trademark the name, there isn't anything you can do to stop the other company.
Customer confusion occurs when another company has a domain name close in spelling to your domain. Their name might differ by one letter, and they might have an inferior product resembling your quality item in a superficial way. Your customers might order the other company's product instead of ordering yours.
Frequently Asked Questions
- Internet domain names: When do they qualify as a trademark?
A domain qualifies as a trademark when it is a "source indicator." It must convey the products or services associated with the name to whoever sees the URL.
- How can I find out if my trademark is already registered?
The USPTO website has many resources available to consumers. The Trademark Electronic Search System (TESS) database enables you to look up existing and pending trademarks to avoid a potential refusal.
- What if someone is using or profiting from my domain?
Send a cease-and-desist letter. This letter informs the company using your trademark that you are the owner of the trademark, and if they don't stop using the trademark by the date specified, you will take legal action.
Get Expert Advice
If you need help with trademarking goods and services, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.