What’s in a Name?

In the Internet’s infancy, domain names served merely as a means of locating specific computers on the Internet.  Now, with globalization and commercialization of the Internet, domain names have taken on business identification and trademark significance.  Domain names are now highly visible in the bricks and mortar world, appearing in television, radio, and magazine advertisements, on billboards, and in most company’s advertising materials.  Now that domain names serve a unique advertising and business purpose, confusion may arise when a company’s domain names are not the same as their trademarks, and vice versa. Domain names are distinct from trademarks because domain names are global and unique (a particular string of letters can link to only one site).  On the other hand trademarks may overlap in different industries or different geographical locations.  In the business world, because Internet users often assume a company’s trademark is its domain name, a domain name may become an equally valuable piece of intellectual property, and, like a trademark, a true business asset.  Ultimately, one of the most important means of identifying the goods or services sold by your company will be through its trademarks and corresponding domain name. In fact, your trademark may be the only means for customers to identify your goods or services, and if your trademark is not the same as your domain name, a customer may become confused when searching on the Internet.   Unavailability of a matching domain name could prove devastating to your business. Furthermore, choosing a trademark that is unusable because it conflicts with a prior user of a confusingly similar mark may result in a significant loss of valuable time and money, wasted marketing dollars and goodwill. For these reasons, when considering a trademark and domain name, it is important to take into consideration the following:  Initially, it is important to undertake a comprehensive search of the trademarks.  A comprehensive search typically covers federal trademarks (both applications and registrations), state trademarks, and common law trademarks (marks that have not necessarily been registered on a state or federal database, but are in use).  To the extent that the comprehensive search reveals that your mark is “clean” and available for use, it is important to take all necessary steps to protect your mark, including confirming that the domain name is available for use and registration and filing for trademark protection with the USPTO.  There are numerous advantages to securing federal registration of a trademark. Perhaps the most important advantage is that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks. Federal registration also makes it easier to prove an allegation of trademark infringement by providing prima facie evidence of trademark ownership and use.  Additional benefits of  federal registration include, among other in things: (1) The right to use the ® symbol in connection with the mark, which may deter potential infringers; (2) The right to sue for infringement in federal court and the possibility to recover profits, damages, costs, and attorneys fees in the event of proven infringement; (3) The incontestable status following five years of registration; and (4) Presence of your mark in third party comprehensive searches. Taking these steps to protect your business identity  at the outset will save a great deal of time and money in the future. 

Trademark Protection Checklist

Most attorneys agree that trademark law is a very complex area of law. Personal efforts to tackle trademark issues is not something I endorse unless you have had at least a few years of legal training. Assuming you have not, let’s take a layperson’s approach to understanding and pursuing the trademark process with the information and services provided by MyCorporation.com:Know Your Rights…and the Rights of Others Against You. Learn about your trademark rights…and about the rights of others. The Trademarks Tutorial and FAQ Center at MyCorporation.com is a great place to start.Assess Your Trademark Eligibility. Is Your Mark, Brand Name, Slogan, or Domain Name even eligible for Trademark protection? Review the article entitled “Analyzing Your Trademark” for a comprehensive discussion about important factors that determine whether your trademark can qualify for protection.Register Multiple Domain Names and Variants. Register the word, phrase, or name as a domain name. Also, save on future legal costs by preventing the infringement with a pre-emptive strike: secure MULTIPLE domain names by registering variants such as: • sound-alike words and phrases
• misspellings
• hyphenated versions
• singular and plural forms of the word(s)
• important TLDs (.com, .net, .org, .biz, & .info)
Search Pending and Registered Trademarks. Search the database of Pending & Registered Federal Trademarks.Search UN-registered Trademarks. While Federal Trademark Registration and protection offers valuable benefits, the MAJORITY of trademark owners HAVE NOT registered their trademarks. While not as powerful as a Registered Trademark, these “UN-registered” trademark owners still possess legal rights and may file suit against you if you infringe an “UN-registered” trademark.
To assess whether you are infringing an “UN-Registered” Trademark, you must Search Public Records (NATIONWIDE) for company names, brands, and domain names that are the same as, or similar to, your desired trademark. NOTE: Because the different states and counties do not offer a united, common database of information for these public records, each state (and every county within that state) must be search ONE-BY-ONE.MyCorporation.com offers a Comprehensive Trademark Search Report consisting of records gathered from 49 states and thousands of different counties and municipalities.Register Your Trademark. Submit your Application for Trademark Registration to notify the world and potential competitors that you have secured a filing date and will be prosecuting infringers to the fullest extent of the law.Once you are granted “Registered” status, not only will your company and its brands gain additional credibility and legitimacy, but you will be empowered with an arsenal of legal weapons that can make defending your trademark rights simple and affordable.Regain Control over Domain Names “Held-hostage” by Cyber Squatters. Use the ICANN Uniform Domain-Name Dispute-Resolution Policy to re-claim a domain name from a cyber squatter that is extorting money from you or illegally re-directing YOUR traffic to his/her website. If you are a REGISTERED trademark owner, it’s MUCH easier than you may think!