My Domain Name

One of the first things a customer asks of me is whether or not he or she should trademark the new domain name they just registered. After at first trying to squirm out of answering the question by pointing out that I am no lawyer and the registration of the domain in no way implies that they are purchasing a legal opinion.

I finally settle down and say that in my humble opinion they should trademark their domain only when expecting to use it as their brand. For one thing, the US Patent and Trademark Office will only allow domain registration when the name constitutes a brand. For another, the $325 fee for requesting the trademark is not refundable if the registrant can’t show the domain is a brand.

In general, domains do not need to be trademarked to be protected legally. There exists an agency to ensure that the first owner of a domain name is protected if someone should attempt to sell similar goods and services with a same or similar name.

The entity responsible for Internet addresses, ICANN (International Corporation for Assigned Names and Numbers), has devised a process called the Uniform Domain-Name Dispute-Resolution Policy (UDRP)which allows domain owners much the same protection for domain names as does the US Patent and Trademark Office for trademarks.

A trademark is little more than the legal term for a brand that has been registered. A brand is defined by the American Advertising Association as, “A name, term, style, sign, or any kind of various other attributes that determines one vendor’s solutions or products distinctive from those of other vendors.”

A trademark, like a domain name, belongs to the first person to use it. It becomes a registered trademark when–guess?–when it is registered with the US Patent and Trademark Office (USPTO), and the rules of that agency apply a when a dispute arises.

It takes a while for the difference to sink in–at least it did for me–but the phrase “identifies one seller’s goods or services distinct from those of other sellers” means what it says: the mark identifies the goods and services, not the sellers.

That is to say, the mere fact that your site is a place where goods and services for sale are found does not mean the domain name is trademarkable. Remember, domain names are first and foremost web addresses and only in certain cases are trademarks as well.

For example, a customer of mine owns a small motel. Let’s pretend the motel is called “Sally’s Place” and the domain name given on the web or any other media as contact is “SallysPlace Dot-com.”

Anyone who arrives in her town and stops at the local gas station to ask about places to stay is going to be told about Sally’s Place, not Sallysplace dot-com. The conversation might go something like this as the tourist steps up to the counter to pay for his gas and get some coffee:

“Nice looking town you got here. My family and I are looking for a reasonably priced place to stay. You got any recommendations?”

“Sure,” the attendant answers, “Sally’s Place is just down the road.”

“Any idea what Sally’s Place charges per night?” asks the tourist.

“They have all that information on their web site, Sallysplace.com!”

“Sally’s Place,” not “Sallysplace dot-com” is the feature that the American Marketing Association says “identifies one seller’s good or service as distinct” from other sellers or service providers and therefore could constitute a brand worth trademarking.

The domain name “Sallysplace dot-com” is not the brand, could not be trademarked, and must look to ICANN’s UDRP for protection, not to the USPTO.

That pretty much sums up what this domain seller knows about domains and trademarks. You don’t need to register a trademark if your domain is not a brand; it isn’t necessary even if it is a brand. And if you’re wrong about it being a brand you could end up giving the government $325 you didn’t need to.

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