Domain Name Trademark & Domain Name Trademark Infringement
Domain name registration by itself is usually simple — just pick a domain name that you want, make sure it is available, pay the registration fee, and you are done. This is true in most cases. However in the unfortunate situation that the domain name you choose results in a domain name trademark dispute or infringement, you could be facing an unforeseen legal situation.
In most cases, it is easily avoidable provided you make sure that the domain name you choose does not result in any domain name trademark infringement. This article is aimed at giving you all the information you need about domain name trademarks, conflicts, infringement and how to trademark your domain name.
What is a Domain Name Trademark?
A domain name like Pepsi or Nike that do not have a common term in them often qualify for trademark protection. What this means is that, if someone used a Pepsi or Nike in their domain name without securing permission from the owners of these trademarks, then it would constitute a trademark infringement. However, if a domain name contains common terms like FoodSupplies.com or CommonEnglishTerms.com, then the owners of these domains do not qualify for domain name trademarks and cannot stop others from using terms like food, supplies, common, etc., in their domain name.
When does a domain name qualify as a trademark?
Not all domain names qualify as trademarks. Simply put, if your domain name contains keywords or commonly used terms that describe your products or services, then they are unlikely to qualify for domain name trademark protection. On the other hand if you created a name like say qutupinx.com that isn’t a common term, then you could qualify as a trademark and apply for domain name trademark protection.
Provided your domain name qualifies for trademark protection, you can notify the U.S. Patent and Trademark Office (PTO) of the intent to use the domain name in commerce as a trademark and apply for trademark protection of your domain name.
It is important to note that there is no legal need for a federal registration of your domain name as a trademark before you begin using it for your business. However, in order to protect your interest in the future, it is always a good idea to register your domain name trademark. The Ninth Circuit U.S. Court of Appeals has ruled that, in order for a domain name to qualify as a trademark, the businesses should be using the domain name for commerce — that is, to sell goods or services — before it can be protected as a trademark. What this means is, just because you own a domain name, it isn’t enough. You should be actively using that domain name for commercial business before you can trademark the domain name.
How to Trademark a Domain Name?
Once your domain name qualifies for trademark protection, the actual process of registering the domain name as your trademark is quite simple:
Step 1: Trademark Search
Even before you register your domain name, it is a good idea to do a trademark search on the website of US Patents and Trademarks Office. Once you know that the domain name you want to register does not conflict with an already registered trademark, you can search for the availability of the domain name and register it for your business.
Step 2: Apply for Registering the Domain Name as a Trademark
After you register your domain name and start using it for commerce, you can apply for registering your domain name as a trademark with the US Patents and Trademarks Office. It is important to note that even if your application for a domain name trademark gets rejected because it conflicts with an already registered and existing trademark, the government will still charge you a fee for filing and processing your application. So it would be wise to take extra care to ensure that your domain name does not conflict with an existing trademark.
What is Domain Name Trademark Infringement
If you register a domain name like “coolnikegames.com” — where a registered trademark “Nike” is a part of your domain name, there is a fair chance that visitors to your domain are likely to assume that your domain is either owned, affiliated to, partner of Nike. This results in deception — however unintentional it may be — and also in an infringement of the already registered domain name trademark Nike.com.
More about domain name trademark infringement
- Registering domain names that include names of already existing products or services in the marketplace can result in a trademark infringement.
- Many suggestive and memorable trademarks are protected by federal and state law, so you need to make sure your domain name isn’t one of them.
- A few descriptive trademarks that have been extensively advertised and promoted are protected under federal and state law.
- When use of two trademarks can potentially confuse customers, it leads to a legal dispute over a domain trademark.
- When there is a conflict, the first user of the trademark wins.
- If your domain name was registered later than original trademark, you may have to stop using the trademark and risk losing the domain name, you may also have to pay damages to the original user of the trademark.
How you can avoid a domain name trademark dispute?
To avoid a domain name trademark dispute, it is advisable to check the database of the U.S. Patent and Trademark Office at www.uspto.gov. This database contains all trademarks that are registered and pending registration. When searching this database, do not just look for the trademark that you have chosen as your domain name. You should also search for names that are similar to or close to the domain name of your choice.
Depending on what the search turns up, ask yourself these questions:
- Will my website compete with another site with a similar name that offers something of the same product or service as my site?
- Could my website potentially take away business from another site with a similar name?
- Is the other name well known?
- Could my domain name be seen as wrongly impersonating the other domain name?
- If your answer is NO, then you can safely register your domain name without the worry of creating a domain name trademark conflict.
Resolving Domain Name Trademark Disputes
People sometimes register domain names in the hope of profiting from selling the domain name to the trademark owner. If you are the owner of the original domain name trademark and someone registers another domain name that infringes on your trademark, then you can either sue the person under the Anti-cyber squatting Consumer Protection Act (ACPA), or through the Internet Corporation of Assigned Names and Numbers (ICANN).
The ACPA defines cyber squatting as registering, trafficking in, or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else. However, ICANN is considered by trademark experts to be faster and less expensive than suing under the ACPA.
Domain Name Registration with Ballistic Domains
Ballistic Domains has been a leader in domain name registration and web hosting for many years. Not only do we offer domain name registration at among the lowest prices in the industry, our domain name pricing is transparent and you know exactly how much you would be paying and for what, before making a purchase decision. Over the years, we have emerged as among the leading providers of domain name registration and web hosting services. Talk to us about your requirements and you will find it hard to find a service provider as flexible, responsive or affordable as Ballistic Domains.
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