We live in an age where it’s imperative to have a business website. It’s how prospects find you. It’s often the way you make a first impression. It’s how you showcase your expertise and why what you have to offer is better than your competitors. And the first step to getting that site up and running is to buy and register a domain name.
But what happens when you do? Would you be able to prevent other entities from using similar ones? What if they are one of those trendy businesses that misspell their name on purpose to stand out? Would they be able to use that domain name even if it sounds almost like yours?
All of these questions are valid, considering that it could lead to consumer confusion. Fortunately, there are certain instances when you can apply for trademark protection.
What is a Domain Name?
A website’s domain name is its uniform resource locator (URL). In other words, your website’s address. For most businesses, this is the name of their business, followed by a .com, .net, .org, etc. Others include a geographical location (e.g. uk, .us, .pr, .ca). Yet a third group tries to get more creative by coming up with phrases that are related to what they do.
If you are just creating a website and want to purchase a domain name, you will first have to check for its availability. This can be done through any domain registrar approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
The most important thing when coming up with a domain name is that it’s easy to remember — and that it’s available for registration. If it isn’t, you can either try to get the owner to sell it to you, or register another name.
What is a Trademark?
While trademark protection ensures that no one else is identifying their business with assets that are related to your business, this protection is not absolute. Its purpose is to ban others from using your trademarked items in connection with similar goods or services. For example, if you design websites and someone else provides laundry service and wants to use a similar phrase, they are generally free to do so.
There are several symbols to inform the public that you’ve received trademark protection. ™ refers to trademarked goods. “SM” refers to trademarked services. An “R” inside a circle (®) means you’ve registered your trademark with the USPTO.
Trademark protection lasts for ten years. After that timeframe, you would have to file for a renewal.
Do Domain Names Qualify for Trademark Protection?
Domain names don’t automatically qualify for trademark protection. If a website’s name is common, you won’t be able to apply for a trademark. However, you would be able to do so if:
- The domain name is distinctive
- People associate the name with your business
- You were the first person to use it in association with your goods and/or services
The main purpose is to avoid customer confusion. Factors to consider include whether a consumer would buy a product thinking they’re purchasing from another familiar company, or whether the spelling of the domain sounds similar to another company with a different domain name, the relatedness of the goods and/or services used with the trademark..
Finally, while it’s possible to apply for trademark protection after purchasing a domain name, it’s advisable to do so beforehand to avoid issues if someone else purchases it while your application is in process.
How To Register for a Domain Name Trademark
If your domain name qualifies for trademark protection, you’re going to spend a lot of time doing research and filling out forms. The steps are the following:
- Conduct a trademark search to determine whether someone else has already done so before you. You can either search the USPTO trademark database, or hire a trademark attorney to do a more complete search for you..
- Identify your filing basis. This refers to whether you’re already using the trademark (use in commerce basis) or whether you have a good faith intention of using it in the future (intent to use); you already own protection in another country and are applying for protection in the United States (foreign registration); or if you applied for foreign registration in another country within the past six months and want US protection to match it (foreign application).
- Apply online on the USPTO website. The requirements will vary depending on the filing basis. Once you submit an application, it becomes public record. Therefore, it could be found by anyone searching the USPTO database or any search engine.
If you’re applying for an Intent to Use trademark, keep in mind that you will have to show use in commerce prior to your registration being issued.
If You Need a Consulting Regarding Registering a Domain Name Trademark, Sanchelima & Associates Can Help
Sanchelima & Associates, P.A. is one of the leading intellectual property law firms in South Florida. With over 40 years of experience, we have represented the IP interests of a wide array of businesses, including Fortune 500 companies — and we can do business in the United States and internationally. Whether you need a consultation or prosecution of a patent, trademark, or copyright, we can protect your business’s interests.
Contact us to schedule an appointment.