Trademarks are your primary identifying feature when conducting business. A trademark could be a logo or a phrase, but whatever it is, it is uniquely yours. No one else can make use of your trademark under penalty of law. A domain name is your location online. This is a web address where visitors can see everything your business has to offer. It is the center of your online presence. 

Both can only be registered for a limited amount of time. Trademarks expire after ten years unless you choose to renew them for another ten years. Meanwhile, domain names last for an amount of time agreed upon between the registrant and the registrar and are also subject to renewal.

About Domain Names, Trademarks, and Intellectual Property

It's always a good idea to think about your trademark before you purchase a domain name. To secure a trademark, you'll have to make a filing with the United States Patent and Trademark Office. The only limitation is that your trademark can't already be in use by someone else. You can search your trademark online, and if you see any with the superscript "TM" symbol next to it, it's already been taken.

When you don't consider your trademark before making your website, you run the risk of using logos, images, and other marks that people have already trademarked. With the huge presence of artists online, there are constantly programs running that scour the web for misuse of their intellectual property. If you're caught using someone else's work without permission, you could face some serious fines. That doesn't mean you're cut off from using other artists' work. Just make sure you know how to get their permission first. Some are happy to share, while others require licensing fees.

The first thing you need to do when registering a domain name is find out if it's available. Registrars will have databases available where you can search to see if the one you want is taken or not. Even if you already have a registered trademark for a name, it doesn't mean the name is going to be available. The internet works on a first-come, first-served basis, and there are people who will sit on potentially high-demand domain names just so they can sell them to those who need it. In some cases, you may be able to take action against those people through the Anticybersquatting Consumer Protection Act.

Understanding Trademark Law

Trademarks are identifying features for products in the marketplace, and if they're clever, suggestive, or memorable, they can be protected under federal law. They have to provide distinction through sales and advertising. Trademark issues arise when consumers become confused and have trouble distinguishing between two similar trademarks. The issue is even more serious when one party intentionally utilizes a similar trademark with the intent to confuse. If found to be in violation of trademark law, the losing party will have to stop using their trademark and may even have to pay damages to the original trademark owner.

If your trademark ends up being somewhat similar to someone else's, it still might be okay to use it under the following circumstances:

  • Your website doesn't offer goods and services that are competitive with those of the similar trademark owner.
  • You don't offer goods and services that are distributed through the same channels.
  • You won't be able to divert traffic away from the other site with a similar trademark.
  • No one will go to your site by mistake when trying to reach the other site.
  • The similar trademark isn't well known.

Domain Name Disputes

Ultimately, if any domain name disputes arise, it will be settled by the courts. This can mean big companies have an advantage, since the courts are set up to favor those who can afford expensive lawyers. There is also a way for a third party to get involved with a domain name dispute. No matter which legal strategy you might have to use, the key is establishing that the other person acted in bad faith and that you have ownership of the registered trademark. Short of that, the outcome is a lot harder to predict. 

If you need help with trademarks and domain names, you can post your legal need 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.