So remember when Buzz Aldrin and Neil Armstrong planted the flag during the moon landing, calling major dibs on a chunk of lunar real estate? That’s kinda how trademark works! As soon as you use your mark in commerce (aka publicly), you’ve staked your claim and you get trademark rights!
But trademark is a very specific form of protection. Sure, you get rights just for using your mark, but these rights are limited when your mark is not registered with the United States Patent and Trademark Office, or “USPTO.” Read more about that here.
One question we get asked on this topic is whether registering a domain name is the same as registering a trademark. Nope! Registering a domain name has nothing to do with having trademark protection under USPTO. Confused? We’ll break it down a little more below.
But Wait, What Exactly Is A Domain Name?
In the simplest of terms, a domain name is an internet address. So for example, www.wilkmazz.com is our domain name, and every time you click a link to our website, your computer knows exactly where to find us, because it has that handy little address.
Got it? Great. Now let’s get to the important stuff.
Trademark and Domain Names
It goes without saying that it’s pretty necessary for any thriving, modern business to have a strong web presence. So we totally get that when the domain name you want is available, of course you’re going to pounce on it. But this is where we have to make the distinction very clear: this registration of your domain name is NOT the same as the registration of your mark itself. This is really important to keep straight, because as we said above, your rights are limited if your mark isn’t registered. In fact, without conducting a trademark search (and possibly registering your mark with USPTO), you actually run the risk of infringing on someone else’s trademark!
For example, say you stake a claim on the domain “www.mcdonalds.com” but you are not thee McDonalds. You better believe that King Ronald, supreme ruler of hamburgers and knower of all, has already trademarked his last name by formally submitting an application to USPTO. If that McDonalds mark is registered, you probably won’t get to use that domain name you purchased for long, because it interferes with his majesty’s established trademark. From there, you’ll probably have two options: give up the domain name or risk fighting the king’s army of lawyers. We don’t like either of those options.
But remember that trademark search we mentioned? If you had run that search before scooping up that domain, you could have totally avoided this scuffle with that red haired clown (no offense intended, Ronnie). If you’ve already checked whether your domain name conflicts with someone else’s registered trademark (hooray for trademark searches in advance!) and you’re in the clear, that’s great! But your rights are still pretty weak without formal registration.
Here’s another example: say you’re Ronald, but you haven’t registered and your claim to trademark is only based off of the billions of burgers served, it’s going to be difficult to strong arm the squatter (you, in the earlier example) into giving up the domain. Why? Because you don’t have USPTO backing you up! This is just one of many benefits of registering with USPTO.
Read Me! I’m Important!
Even if you won’t run into trademark infringement problems with someone else’s mark and you are planning on formally registering your mark, having that domain is not helpful evidence for registering your trademark! This is because USPTO looks at your mark being used in commerce (remember that from earlier?) in granting registrations, and purchasing a domain name just doesn’t cut it for that standard. You’ve got to be selling a service or goods to the public, not buying domains, for there to be “commerce.”
Wrapping It Up
Long story short: domain names don’t give you trademark protection. The act of buying a domain name is exciting, but it’s not technically legal protection for any intellectual property claims that might come your way. If you have a viable mark, your best bet is to formally file a trademark application with USPTO. Not sure whether you’re ready for the application process? Let us know at email@example.com— we’re happy to walk you through it.
By: Olivia Phillips – 08/13/18
Disclaimer: Although this article may be considered advertising under applicable law and ethical rules, the information in this article is presented for informational purposes only. Nothing should be taken as legal advice. Reading this article does not form an attorney-client relationship with us. An attorney-client relationship is formed through a signed engagement agreement. If you would like further information, wilkmazz pc would love to help you out! Feel free to reach out to us at firstname.lastname@example.org with any questions.
Photo Credit: © Norbert Levajsics