A domain name is often also a trademark. When a domain name, such as Amazon.com, is also used to identify and advertise your business¹ goods or services, then it is being used as a trademark. The best way to protect all trademarks from infringement and cybersquatters is to register them with the US Patent and Trademark Office. Domain names are reviewed for registration just like any other trademarks. The trademark is compared to other registered marks without regard to the .com, .org or other top-level-domain portion of the mark, since this part is generic.
Choosing a domain name which stands out from other brands, yet provides web surfers an easy domain to find and remember can be quite difficult. Some tips for choosing a trademark and/or domain name: select a mark which is not confusingly similar to those of your competitors; avoid using only descriptive terms; avoid geographic terms and names of individuals; consider novel spellings or presentations of the marks, including stylized lettering, coloring or the use of a logo; and conduct a search of all relevant databases for confusingly similar marks before selecting a name. For example, my domain tm4smallbiz.com is suggestive of my business as a trademark attorney without using descriptive wording such as ‘trademarks man’, and has a stylized presentation with the first two letters capitalized. I have chosen a domain name which is unique, easy to remember and is also a strong trademark.
Registering a good trademark is the best way to ensure you are protected if someone else tries to use a name or domain name which is confusingly similar. Federal registration offers many procedural and substantive rights and extends protection to all 50 states. The owner of a registration is presumed to be the exclusive owner of the trademark for the goods and services specified in the registration, and to be entitled to use it nationwide. Registration also gives constructive notice to everyone in this country that you own the mark, whether they actually know it or not. After five years of registration, the rights become incontestable, eliminating nearly every defense to trademark infringement. Federal registration also allows use of the registration symbol -®- next to your mark, which carries a deterrent effect. In addition, registration allows a party to potentially recover triple damages, attorneys fees, and other remedies against infringing parties in court. For more information about trademark registration, visit the US Patent and Trademark Office web site at www.uspto.gov or contact a trademark lawyer.
The explosion in the number of domain names has led to increased customer confusion. Competition is capable of coming from anywhere in the world. Brand recognition and strong trademarks are increasingly important to attract and maintain customers in this immense marketplace. Protecting your domain name under trademark law requires a combination of creative name selection and registration with the US Patent and Trademark Office.
The information contained herein is not intended to be legal advice. Contact an attorney if you have any questions regarding your trademark rights.