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The ABC's of Trademarks and Domain Names

BY DEBORAH S. SWEENEY

Trademarks and domain names have become fundamental in the world of business. A functional knowledge about trademarks and domain names, as well as how they may apply to you, is both beneficial and critical so that you won't get the short end of the litigation stick.

Trademarks and Domain Names

A "trademark" is either a word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A "domain name", otherwise known as a "uniform resource locator", may be used to identify an organization or other entity on the Internet. A domain name typically represents the homepage of a particular entity's website, and is in actuality a "label" that refers to Internet protocol address numbers. A domain name is not synonymous with a trademark. However, a domain name may act as a trademark under certain circumstances. To qualify as a trademark, the domain name must not simply be used as an address or location. Rather, the domain name must be used to identify the goods or services of the person or firm claiming the mark. The domain name must become an integral part of the goods or services in order for it to be the subject of a registration.

Advantages to Registering Trademarks and Domain Names

As part of the preliminary steps to trademark and domain name registration, it is wise for the potential applicant to undertake a comprehensive trademark search. Failing to do such a search and analysis of pending and registered trademarks and domain names may result in litigation for an alleged infringement as well as the loss of significant marketing monies and good will.

If a comprehensive search reveals that the mark and domain name are available for use, one should seek federal registration of the trademark. If you have done your homework and thoroughly considered your trademark, and domain name options, it is wise to file for a federal registration of your trademark that coincides with the goods/services offered and the domain name. Similar, if not identical, trademarks and domain names will not only save marketing dollars, but will also minimize the costs associated with filing for federal registration with the U.S. Patent and Trademark Office. Having a registered trademark provides the owner prima facie evidence of ownership and the exclusive right to use the mark throughout the United States in connection with the goods and/or services listed in the registration. Moreover, having a federally registered mark, entitles the owner to obtain legal remedies not available without registration, including the ability to prevent others from infringing goods.

Once you obtain a registered mark, such registration becomes constructive notice of your claims of ownership. The advantage to such a constructive notice is that it provides evidence of your rights in a mark and thus it is not up to you to prove the existence of your rights to your mark. Finally, when the mark is in continuous use for 5 years and the appropriate declaration is filed, the rights in the mark become incontestable.

In domain name disputes, owners of registered trademarks hold a distinct advantage over those parties whose trademarks are not federally registered. If you plan ahead by purchasing a corresponding domain name, you may not even have to get to the point of defending your trademark rights as against a domain name owner. More specifically, if you do your research, purchase a domain name, and register the corresponding trademark, you will put your business in a stronger position, minimize the risk of trademark infringement actions (both prosecuting and defending), and save money in the long run. Often businesses skimp on undertaking a comprehensive search, registering trademarks federally, and obtaining domain name equivalents - only to find themselves having to spend far more down the road. And so goes the saying, "an ounce of prevention is worth a pound of cure."

How to Register Trademark and Domain Names

Domain name Registrars, such as Network Solutions at networksolutions.com can provide everything you need to register your domain names - and any domain names that might be confusingly similar to your trademark. Similarly, MyCorporation.com can aid in filing trademark applications online. And, if all this seems too confusing, you can always contact an attorney for assistance.

--Deborah Sweeney, Esq.

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