Is My Domain Name a Trademark?
By: Maria Crimi Speth
This is not only a common legal question but also a great
question as the answer is - it depends!
A domain name simply is an address on the Internet. Computers
find web addresses by a series of numbers known as an IP
address. To make the process more user friendly, the numbers
are matched to words that, hopefully, can be easily
remembered. The best and most valuable domain names are very
descriptive, and very easy to remember. Cars.com is a great
domain name if you are in the business of selling cars.
A trademark identifies the particular source of goods or
services and is essentially a brand name. In order to
identify a particular source, a trademark must be something more
than the generic name for the product or service. For
example, if I refer to a "computer," I have not told you anything
about the source of the product. On the other hand, if I
refer to a "Dell" computer, I have identified a particular source
and brand. The trademarks that receive the most legal
protection are those that are not descriptive at all.
It is this function of a trademark that makes some domain names
trademarks and stops others from ever being trademarks.
Ebay.com is a trademark. It not only provides an address on
the Internet, but it also tells us a particular source of online
auction services.
Recently, Hotels.com has had its share of trouble with this
concept. Hotels.com not only refers to a website address, it
arguably identifies a particular brand. Many of us can hear
the jingle in our heads -- "hotels" (pause) "dot.com" -- and many
of know that there is a specific company that provides that service
at that address on the Internet. Hotels.com has a substantial
advertising budget that has produced that recognition.
However, the courts have held that hotels.com is not a
trademark! Their reasoning is that hotels is not a
trademark and cannot be a trademark and the ".com" portion is only
an Internet address. Surely, hotels.com cannot stop every
other company in the lodging industry from using the word
"hotel". Hotels.com already has the unique domain name; there
can only be one website at that address. But, it cannot go so
far as to keep the "hotels" designation from its competitors.
If your brand name is not generic or purely descriptive, and if
you have a domain name that is your brand name, then, yes, your
domain name is a trademark. A good example of this would be
ebay.com. On the other hand, if you are fortunate enough to
have a generic domain name, such as cars.com, you must be content
with the benefits of being easily found on the Internet and easily
remembered. It is unlikely that you will be able to claim
trademark protection in your domain name.
If you would like to register your trademark with the United
States Patent & Trademark Office, which provides you with
nationwide exclusive rights to the name, contact us at Jaburg Wilk
to learn about our reasonable flat rate trademark registration
services.
About the author: Maria Speth is lawyer
at the Phoenix based law firm of Jaburg Wilk and she is the
Intellectual Property Law Department Chair. She is a frequent
speaker on intellectual property law, internet law, trademark and
tradename law and is the author of the book, Protect Your
Writings: A Legal Guide for Authors. She can be reached at
602.248.1089 or mcs@jaburgwilk.com.
3200 North Central Avenue
. Phoenix . Arizona