This month we have seen several issues arise concerning the use of domain names with respect to the rights of registered trademark owners. Registering a domain name is not the same as registering a trademark and I thought some information as to the difference and how they might interrelate would be helpful. Understanding the difference and taking steps to protect the trademarks that you have some claim to can save you significant aggravation and expense down the line and help you avoid the risk of possibly losing your domain name or your marks.

According to the United States Trademark Act which is also known as the Lanham Act 15 U.S.C. §1127 defines a trademark as follows:

“… Any word, name, symbol, or device, or any combination thereof–

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

“Servicemark” is the correct term used for services as opposed to products.

One key to the ability to register a mark is that there must be either an actual use or an intent to use the purported mark in commerce or trade in a manner that indicates the source of the goods and distinguish them from the goods of others. Registering a domain name is most certainly insufficient by itself to qualify for trademark registration or protection.

Furthermore, registering a domain name does very little to secure your trademark rights under the Lanham Act. While you own a trademark upon your use of the mark in commerce, in order to secure your right to protection under federal trademark law you must register your mark with the United States Patent and Trademark Office. This process involves the submission of an application, payment of the appropriate fees which is based upon the number of International Classes of products or services that you offer under the mark. Approximately 6 months from the submission of the application you will receive your first contact from your assigned trademark examiner. If the evidence that you have submitted in support of your mark is appropriate for the information in your application and your mark is otherwise the type of mark that is able to be registered and there is no prior conflicting use of your mark and there is no opposition to your application then you may be granted publication in the Principal register. Only then can you be said to have “registered” your trademark. The process takes approximately one year from start to finish.

An attorney is not required for this process. An applicant is responsible, however, to observe and comply with all substantive and procedural issues and requirements whether or not they are represented by an attorney. In many instances even where you feel comfortable making our own filing it may be desirable to employ the services of an attorney who is familiar with trademark matters to greatly simplify the procedure.

Only federally registered trademarks may be designated by the federal registration designation ®. The SM and TM marks are used to designate a claimed trademark right however their use may be governed by the law of your particular state. The federal registration symbol should only be used on goods or services which have been identified in the applicable federal registration.

Federal trademark registration has the following benefits.

(1) It provides constructive notice to the world of your claim to the ownership of the mark.

(2) It serves as evidence of ownership of the mark.

(3) You may bring actions in Federal Court to protect your mark.

(4) It may be used as a basis to secure registration in Foreign Countries

(5) With respect to goods, your mark can be filed with the US Customs service to prevent the importation of infringing foreign goods.

With that understood, because of the large and always increasing number of top level domain names and the ease with which they may be registered, the owner of a trademark can often learn that another has either intentionally or unintentionally registered a domain name consisting of the trademark owner’s mark. In general, the owner of a federally registered mark has the luxury of a choice between (1) proceeding to Federal court to secure an order allowing the recovery of the domain name together with monetary or other damages according to proof or (2) proceeding under the Uniform Dispute Resolution Policy (UDRP) developed by ICANN.

Although it is helpful, trademark registration is not necessary to proceed under the UDRP however there can be no award of any damages other than an order to transfer the domain name in question. Under the UDRP an arbitrator or panel of arbitrators can issue a binding order to a registrar to transfer a particular domain name. There are some registrars that do not subscribe to the UDRP which can present certain difficulties when attempting to recover a domain name registered in bad faith.

The proof necessary to prevail in Federal Court for trademark infringement under the Lanham Act is not the same as the proof necessary to prevail under the UDRP. The specific proof necessary is dependant upon the nature of the cause of action which is beyond the scope of this entry. In general, however where you have registered a trademark for certain services (such as web hosting) and another company is offering the same or similar services under a domain name that is the same or confusingly similar you are likely well within your right to not only demand that the company stop the use of your mark but that they may be responsible to pay damages resulting from their use of your mark and that they must turn over the domain name to your control as well.

Often we are contacted by individuals that have received a cease and desist letter from a lawyer representing a trademark owner claiming a violation of trademark law. These individuals often express frustration based upon the misunderstanding that because the trademark owner “left the domain name open” by failing to register it that they are somehow entitled to some right simply because they have successfully registered the domain name. This is simply not the case. There are many domain names available for registration which are essentially useless to anyone but the owner of the mark.

Before you register a domain name, it would be prudent to examine whether the domain is registered as a trademark, is the type that is subject to registration, or is otherwise in use in commerce by others before you spend too much time and effort getting used to your new domain.

About: Jeffrey A. Cohen is a partner in the El Segundo, California office of Cohen & Richardson, LLP. Mr. Cohen can be reached at JCohen [at] InternetLitigators.com. The reader is cautioned that the information contained herein is not legal advice and is not a substitute for legal advice. There is no attorney client relationship created by this information.