A domain name is an incredibly valuable business asset. Trademark registration of internet domain names is one way to protect your online presence. Let’s look at the process.
A trademark is a word, logo or phrase representing a product or company. You must use the mark in commerce before you can register it. Protected marks allow consumers to associate certain characteristics with a particular company or product. If you see the Apple logo, for example, you know the product in question is most likely easy to use and technologically progressive.
Internet Domain Names
What is a domain? It is a classic trademark in that it is a word or set of words identifying a company or product. If I mention “Amazon.com,” you immediately associate the name with the huge e-commerce site. In short, a trademark is akin to a brand.
As a word or set of words, a domain name is primed to be registered as a trademark. Why take this step? The benefits include:
- Creating a point in time in which legal notice is given to all others that you own and are using the mark nationally. This notice prevents anyone else from using it after this point in time.
- Often necessary to do before filing in other countries.
- You must register before suing in federal court.
- If you are forced to sue to protect the mark, you can recover triple damages and your attorney’s fees if you prevail.
- In a dispute, your trademark is presumed to be valid, and the opposing party has the burden of proving otherwise.
- A registered mark is very helpful in dispute resolution efforts.
In short, it is worth undertaking the registration process.
The first step in trademarking a domain name is determining if the Patent & Trademark Office [“PTO”] will even accept the application. You cannot register a domain comprised of descriptive words. SoCalInternetLawyer.com, for example, would be very difficult to register because it is merely descriptive in nature. The name is descriptive because I am a “So Cal Internet Lawyer.” The PTO examining attorneys will reject my application without a second thought. In contrast, “Google” is a unique word that is not descriptive, which makes it little surprise the company successfully trademarked the name.
The next step is then to go through a trademark search. A quality search is going to ascertain whether there are already other marks in use or registered that will conflict with your filing. If there are, an evaluation will be needed to determine if you can use the domain or should go with something else.
A professional service or lawyer should conduct your trademark search. Searchers need to analyze a variety of databases not available to the public. If you try to do the search yourself and make an error, the negative connotations can be brutal. You might spend three to five years building your business through a ton of blood, sweat, tears and money. Then a cease and desist letter comes in the mail asserting you are infringing on another mark. You are forced to change to another domain and business name. That’s a lot of money, time, and effort down the drain.
Once the search is completed, it is time to finally register. The registration process isn’t particularly difficult. The simplicity can be a trap, however. You are required to make certain assertions in the process, such as choosing mark classifications. If done incorrectly, you can leave yourself open to future problems.
Once your application is in with the Patent & Trademark Office, it is time to hurry up and wait. The approval process takes a long time. You should receive a postcard from the PTO in three to four months acknowledging they received your application. From there, it can be another three to six months before an examining attorney either approves the mark or, more likely, send you correspondence questioning certain aspects of the filing. If you receive a letter, you must reply and then wait for another three to six months. The process can take six months in a best-case scenario and up to two years in a worst-case one.
In a word – yes. A registered trademark domain gives you leverage in any dispute regarding the domain. Also, a company considering purchasing your business will assign more value to a trademarked domain name. If you need to register your mark, contact me for a consultation.
Richard A. Chapo, Esq.