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Domain Names As Registered Trademarks

By Eric Misterovich

The United State Patent and Trademark Office (USPTO) allows individuals to register domain names as trademarks under certain circumstances. This can be valuable for online entities because while domain names are protected against theft and cybersquatting, a domain name that is a registered trademark would also receive powerful federal trademark protection.

Generally, a domain name registered as a trademark includes only the “middle” part of the domain name. A domain name is made up of transfer information (http://www.), a second-level domain (example), and a top-level domain (.com). The full URL would read Typically, only “example” would be registered as a trademark. However, a recent move to create and implement more top-level domains, some of which may be registerable, has led to some debate at the USPTO.[1]

Use Domain Name as a Source Identifier 

The key to registering a domain name as a trademark is that the name serves as a source identifier. It must be perceived by potential purchasers to indicate a source, and not merely as an address to website.

In In re Eilberg, the Trademark Trial and Appeal Board held that (a lawyer’s website) could not be registered as a mark because the name did not indicate any services provided, it simply described where the individual could be found on the web.[2] The attorney presented a business card with the domain name on it, but the attorney’s proper name was the focal point of the business card, which led to the Board determining the domain name was just the attorney’s internet address, not his trade-name.

Applicants must present an intent to use and evidence of the domain names ability to serve as a source identifier. The USPTO examiner must look at any presented evidence (specimens) from the applicant and make the determination that a potential purchaser would see the domain name as a source identifier, the applicant’s intent, hope, or expectation is not considered.[3]

If the mark to be registered features anything beyond the second-level domain (e.g., is the mark sought), the specimen must reflect that (e.g., a business card reading just example would not be sufficient to register as a trademark). The placement of the “.” or dot is important—if the “.” is before the mark, potential purchasers may confuse the potential mark with a top-level domain and would therefore not be registered (e.g., example would be acceptable, but .example would not be). Further, generic top-level domain cannot be registered as marks because consumers recognize those names as a standard part of the URL, not as identifying a specific source.[4]

However, the generic top-level domain can be a part of the domain name to be registered. In such a case the applicant first must show that the generic top-level domain is used with at least one other company that deals in related goods or services. Second, the applicant must also provide significant evidence[5] that the domain name including the top-level domain is so recognizable that the average consumer would recognize the top-level domain as part of the service mark (e.g., Third, the applicant must show proof that the domain name is registered with ICANN. Finally, the applicant must show that the name is registered for “the benefit of others,” otherwise the mark looks more like advertising for an individual.

Advertising one’s own products or services is not a “service” under the Trademark Act. Therefore, the domain name of a website created simply to advertise the creator’s products or services is not registerable as a trademark.

The process of registering a domain name with the USPTO as a trademark is complicated and difficult. An online entity seeking to trademark its domain name should seek the advice of an Intellectual Property attorney before even applying for registration with the USPTO.

[1] See TMEP § 1215.02 (“To the extent that some of the new gTLDs [generic top level domains] under consideration comprise existing registered trademarks or service marks that are already strong source identifiers in other fields of use, some of the premises mentioned above may no longer hold true for such gTLDs (e.g., a gTLD consisting of a coined mark is not an abbreviation of an entity type or class of intended user of domain space). Where the wording following the “.” or “dot” is already used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. Accordingly, in some circumstances, a gTLD may have source-indicating significance.”).

[2] In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998) (“[T]he asserted mark, as displayed on applicant’s letterhead, does not function as a service mark identifying and distinguishing applicant’s legal services and, as presented, is not capable of doing so. As shown, the asserted mark identifies applicant’s Internet domain name, by use of which one can access applicant’s Web site. In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant’s Web site appears. It does not separately identify applicant’s legal services as such. . . . This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or [service marks]. For example, if applicant’s law firm name were, say, EILBERG.COM and were presented prominently on applicant’s letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registrable.”).

[3] See In re The Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960).

[4] However, “the applicant may, in some circumstances, avoid or overcome the refusal by providing evidence that the mark will be perceived as a source identifier. In addition, the applicant must show that: (1) it has entered into a currently valid Registry Agreement with the Internet Corporation for Assigned Names and Numbers ( “ICANN ”) designating the applicant as the Registry Operator for the gTLD identified by the mark and (2) the identified services will be primarily for the benefit of others.” TEMP § 1215.02(d).

[5] This can include advertising and reports of money spent on advertising.

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