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Know the Law: Domain, Trademark - Two Different Things

Written by: Catherine S. Yao

Published in the Union Leader (4/24/2017)

Q: I have registered my business name as a domain name. Is that enough to protect my company’s trademark?

A: Simply registering a domain name or your company name does not provide you with trademark protection. 

Even though your trademark and your domain name may be the same word or phrase, it’s important to understand that they are completely different things. 

A domain name might be most simply described as an internet network address that is readable in human language. An available domain name can be obtained on a first-come, first-served basis, with relative ease via payment and registration of the name with a domain name register.

Generally, there are very few requirements to obtain/maintain a domain name, and there is no examination process, for example, to evaluate confusion with other domain names. 

On the other hand, trademarks/service marks, collectively referred to as trademarks for convenience, might most simply be described as a source identifier for goods and services. 

To apply for a federal trademark registration with the U.S. Patent and Trademark Office, the applied-for mark must undergo an examination process that considers, among other things, whether the mark is likely to cause consumer confusion with any previously registered marks. 

Furthermore, to complete the registration process, an applicant will need to provide evidence of use in commerce, known as a “specimen of use.” The Trademark Act defines “use” as “the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.” 

As you can see, the manner in which a mark is used is critical in developing and establishing trademark rights, which differs greatly from any domain name requirements.

The registration of a domain name by itself is not sufficient to demonstrate adequate use of a mark. Although active use of a domain name may accumulate some common law trademark rights, it is unlikely that the holder of a domain name would be able to stop others from using the same name, without other prominent and appropriate use. However, it may be worth noting that a domain name could be registrable as a trademark, if it is properly being used as a source-identifier for goods and/or services.

Applicants/registrants who do not meet the federal registration requirements commonly make the mistake of making incorrect or fraudulent statements to the Patent and Trademark Office, which could lead to cancelation of any registration obtained thereon. 

A trademark attorney can advise you regarding use in commerce, sufficient use of your mark and the application process.

Catherine Yao can be reached at [email protected].

Know the Law is a bi-weekly column sponsored by McLane Middleton, Professional Association. We invite your questions about business law. Questions and ideas for future columns should be addressed to: McLane Middleton, 900 Elm St., Manchester, NH 03101 or emailed to [email protected]. Know the Law provides general legal information, not legal advice.

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