Maximize The Intellectual Property Rights in Your Domain Name – Use it as a Trademark/Service Mark

Mark A. Wright
Director and Chair of Intellectual Property Practice Group
Published: McLane.com
January 1, 2000
Image of Intellectual Property box

Many business owners are unfamiliar with the laws of intellectual property and fail to develop, identify and fully protect all of the key intellectual property assets of the business. If your company has a website, uses e-mail, engages in any kind of “electronic commerce,” you should formulate a strategic plan to maximize the protection of your domain name.

Domain names in and of themselves are entitled to very little protection. In fact, use of a domain name solely as a Uniform Resource Locator (URL) will not provide you with any trademark rights or ability to seek federal registration. Even if you use a domain name as a trademark, without proper use and specimens, federal registration will not be possible and your rights will be limited.

HOWEVER, there are ways in which you can use a domain name so that it functions as a trademark or service mark (trademark identifies tangible goods, where a service mark identifies services provided). If such proper use occurs, your domain name can also serve as a trademark/service mark, entitled to the valuable benefits of federal registration with the United States Patent and Trademark Office (USPTO). The USPTO has published specific rules and guidelines dealing with registration of marks composed of domain names. USPTO Examination Guide No. 2-99.

Introduction to Domain Names

A domain name is normally used as a URL, which serves as the address of a website or document on the Internet. In general, a domain name is comprised of a second-level domain, sometimes the name of a company or product (i.e., Xerox) as well as a top-level domain (TLD). Generally, TLDs are designated for use by the public, with each TLD intended for use by a certain type of organization (i.e., .com, .org, .edu, .net and .gov). The wording to the left of the “dot” is the second-level domain, and wording to the right of the “dot” is the TLD.

Example: If the domain name is Xerox.com, the term “Xerox” is a second-level domain and the “.com” is the top-level domain or TLD.

Domain Names Used Solely as URLs

A domain name that only serves as an Internet address to identify the location of a person’s website or document, and which does not separately identify the person’s goods/services, does not function as a trademark and will not be entitled to federal registration. In In re Elilberg (TTAB 1998), the Trademark Trial and Appeal Board affirmed the USPTO Examining Attorney’s refusal of registration of “www.eilberg.com.” The refusal to register was issued on the basis of inadequate specimens submitted with the federal application. The TTAB found that use of the domain name on letterhead and business cards merely indicated the location on the Internet of where the applicant’s website appeared and did not separately identify the applicant’s services.

If a domain name is used in a way that would be perceived as nothing more than an address at which the applicant can be contacted, the domain name is not functioning as a trademark/service mark and federal registration will be refused. Examples of domain names used only as Internet addresses include domain names that are in close proximity to language referring to the domain name as an address or domain names displayed merely as part of the information on how to contact the owner. While it is okay to use domain names in this manner, the domain name must also be used in a trademark or service mark sense if federal registration will be achieved.

How to Create Trademark Rights in a Domain name and Obtain Federal Registration

Generally speaking, federal registration of marks consisting of domain names are subject to the same requirements as all other applications for federal registration. The problem, however, is that people are not properly counseled on how to use a domain name so that it functions as a trademark or service mark, and therefore entitled to federal registration.

Whether or not a domain name is being used as a trademark/service mark usually hinges on the “specimens” evidencing use. Acceptable specimens evidencing proper use of a mark must exist before federal registration of a domain name will be granted. In the case of a trademark (tangible goods), the specimens are usually labels, tags or packaging for the goods. In the case of a service mark (intangible services), the specimens are usually brochures, advertisements, promotional material or web pages which prominently display the mark and include a clear reference to the services provided under the mark. In either case, the mark must be prominently displayed and set apart from surrounding text. The following examples illustrate how to use domain names as trademarks/service marks in order to obtain federal registration:

Use of Domain Name solely as URL (no trademark protection) Use of Domain Name as a Trademark/Service Mark (Maximum IP protection and federal registration)
Use of xyz.com where only evidence of use is a business card, letterhead or web page that lists telephone number, fax and company name. Goods – Use of xyz.com prominently on tag, label or packaging for a product.

Services – Use of xyz.com prominently on brochures, advertising, promotional materials and/or web pages with a clear reference to the services provided under the mark.

Advertisement which states “visit us on the web at “www.xyz.com” is not trademark/service mark use. Set xyz.com domain name apart from other text an/or underscore the name.

 

As noted above, the USPTO has formal guidelines for examination of trademark/service marks which comprise domain names. While these general rules governing protection and federal registration of domain names are useful, applicants must also be wary of other grounds on which domain name applications may be refused, including refusals based on surnames, descriptiveness, generic marks and geographically descriptive refusals. These types of refusals apply to all marks, including domain names.

Without federal registration, rights in trademarks, service marks and domain names are limited to common law protection. Common law protection extends only to the immediate geographic area of use. For any company doing business in more than one state, common law protection is usually inadequate. With the legal complications and challenges that can arise between domain names and trademarks, it is critical that you know how to use your domain name so that it functions as a trademark/service mark and is entitled to federal registration.