Trademark Registration of Internet Domain Names --
Selecting the Right Trademark in a "dot com" World
© 2000 Gorman & Williams
by:
Michael S. Yang
Gorman & Williams
msyang@gandwlaw.com
www.gandwlaw.com
Phone: 410-528-0600
Fax: 410-528-0602
January, 2000
I. Introduction to Domain Names
A domain name is part of the Uniform Resource Locator
(“URL”), which is a website or file’s location or address on the Internet.
A URL is typically composed of three portions: the protocol type (usually
“http://” which stands for hypertext transfer protocol), the second-level
domain, and the top-level domain (“TLD”). For example, in the URL
“http://www.smile.com” the TLD is “.com,” the second-level domain is “smile,”
and the protocol type is “http://.” In physical terms, these can
loosely be thought of as giving the site a unique address on a very big
(and increasingly crowded) street.
The TLD traditionally was used to identify the content
of a website. Thus, “.com” sites were originally for commercial purposes,
“.edu” sites were for educational purposes, and “.gov” sites were governmentally
related. Today, the administrator for assigning domain names does
not discriminate when registering individuals for .com, .net, and .org
sites, and they may be freely registered by the general public. Though
additional TLDs have been discussed and proposed to accommodate the growing
number of registrations and domain names, none have yet been added.
II. Trademarking Domain Names
Trademark rights inure through actual use in commerce
and priority of that use, the goal being to prevent mistake, deception,
and confusion with regard to origin or source, and also to protect the
trademark owner’s market and commerce. The standards and requirements
for trademark applications for Internet domain names are the same as those
for any other type of trademark; similarly, the protection benefits are
also identical. Domain name trademark applications may be filed as
both use applications and also intent-to-use (ITU) applications; use applications
are for marks that are already being used in commerce and ITU applications
are for marks that have not yet been used in commerce, but such use is
fairly imminent.
According to the United States Patent and Trademark
Office (“USPTO”), neither the beginning of the URL (“http://www.”) nor
the TLD have any source indicating significance. Thus, it is the
second-level domain which holds the greatest significance when choosing
and registering a domain name and applying for a trademark. Generally,
for domain name marks, the applicant may add or delete a TLD on the drawing
of the mark without materially altering the mark, as, according to the
USPTO, the public recognizes that a TLD is a universally-used part of an
Internet address, and that the essence of a domain name mark is its second-level
domain name, and not the TLD. Importantly, the USPTO generally permits
the substitution of one TLD for another in a domain name mark, and also
permits the addition or deletion of “http://” or “www.”
A domain name is not entitled to trademark protection
simply because it is an active domain name, even if the address is being
used in commerce. The domain name must be used in a manner in which
the domain name itself is an actual mark. For example, to use one
of the most famous Internet retailers as an example, Amazon (www.amazon.com)
has established its trademark for its name (“amazon”) and has a registrable
trademark for its domain name. It did this by using its mark, amazon.com
or “Amazon,” as a commercial name and identifier for its website and the
plethora of goods which it sells via its website, in various forms of media
and advertising. Its continued use of its second-level domain as
its trademark, rather than simply as an address, has only served to strengthen
its mark.
On the other side of the coin, early Internet websites
and retailers such as ESPN (www.espn.com) and Barnes & Noble (www.bn.com)
originated and advertised their Internet websites as “ESPNet Sportszone”
(espnet.sportszone.com) and “Barnes & Noble Online” (www.barnesandnoble.com).
While those addresses are still active, more recently, these sites have
advertised themselves as “espn.com” and “bn.com,” respectively. The
reasons for these changes most likely had to do with both ease of use as
well as for trademark reasons; the websites, by advertising and using their
second-level domains, are attempting to create identifying marks in the
actual domain names themselves, thus making the names registrable as trademarks.
III. Unacceptable Use of Domain Names as Trademarks
A mark composed of a domain name is registrable as
a trademark or service mark only if it functions as a source identifier.
Thus, merely putting a website address on a business card or letterhead
would not qualify that domain name for trademark protection. The
use of the website on the business card would be the equivalent of having
a street address on a business card and then claiming the address to be
a trademark; the address does not function as a mark and would not be registrable
as it would not have the function of distinguishing any type of goods or
services. Only in specific instances, such as where the business
name is identical to the business website address, would the address be
appropriate for trademark protection. The proposed mark must be perceived
as something more than just an address where the owner or business may
be reached.
The mere advertising of one’s own products or services
does not itself constitute a service. Thus, the creation of a website
for the sole purpose of advertising the creator’s products will not justify
trademark registration of the domain name as a service mark.
IV. Unregistrable Use of Domain Names as Trademarks
Under conventional trademark law, registration will
be denied to an application which resembles that of a prior user; an applicant
cannot obtain rights in a mark that another person has not abandoned if
use of that mark by the applicant would be likely to cause confusion, mistake,
or deceit. The existence of a likelihood of confusion would be required
to bar registration, evidence of actual confusion never being a requirement
of proof, though the degree of similarity is a question of fact.
The prior use does not have to be as a actual trademark.
Marks which are merely descriptive are not registrable.
For example, a domain name such as “www.bookstore.com” would not be registrable
because it simply describes what the website is. Second, a mark which
is merely composed of a surname will not be registered. If the mark’s
character as a surname predominates in terms of its primary significance
to the purchasing public, then it is not registrable. Third, a mark
which is geographically descriptive or geographically misdescriptive, or
merely describes the subject matter of the information services (e.g.,
“www.maryland.com” for a site about Maryland), is also not registrable.
Fourth, a mark which merely contains generic terms will not be registered
on the grounds that the mark is generic -- the addition of a TLD does not
make a generic term into a registrable mark. Lastly, immoral, deceptive,
or offensive marks may not be registered.
In any of these cases, the association of the mark
in the mind of the consumer is of controlling significance. Each
of these bars to registration are subject to the secondary meaning exception.
For the exception to apply, the mark must have achieved some sort of secondary
significance in the minds of consumers, such as the name “Frank Purdue”
for the secondary meaning of chicken. This will act to allow the
mark to be registered with the USPTO.
It is important to note that marks which contain
the phonetic equivalent of a TLD will be treated in the same manner as
a mark composed of a regular TLD, and a disclaimer may be necessary (in
the form of the regular TLD). For example, if a registrant wants
to register the domain name “Smile DotCom,” the registrant would have to
disclaim the TLD “.com” rather than the phonetic equivalent “DotCom.”
V. Disclaimers
The trademark law provides for the use of a disclaimer
when registering a mark which includes unregistrable matter. For
domain name purposes, this would include a disclaimer for descriptive or
generic terms and TLDs. Also, if the domain name includes a misspelled
or telescoped word (e.g., “friend” instead of the misspelled “freend” or
telescoped “frnds”), the correct spelling must be disclaimed.
VI. Registration
Once an appropriate domain name is chosen, specifically
one which meets both the conventional rules for trademark registration
as well as the nuances for registration of domain names, it would then
be appropriate to seek counsel for preparing and handling the trademark
registration. If the mark has not yet been used in commerce at the
time of filing of the registration, only an intent-to-use application may
be filed, and actual use in commerce must occur after the mark is approved
and the period for opposition has passed. This is standard procedure
for all trademark registrations.
