Internet Domain Names as Trademarks

The use of Internet domains has generated a number of questions directly pertaining to U.S. trademark and servicemark laws. The question most commonly asked about marks is whether a term, which is a domain name, can also be registered as a trademark.

The quick answer is "Yes." An Internet domain-name used to identify and distinguish the goods and/or services of one person, from the goods and/or services of all others, and is also used to indicate the source of the goods and/or services may be registered as a trademark providing it satisfies all the other rules for registration.

In order to register an Internet domain name, an applicant must show he offers services via the Internet. Further, specimens submitted in support of the applicants mark must show use of the Internet domain name as an identifier of the source of the goods and services. The use of an Internet domain name merely as a directional reference, similar to the use of a telephone number or business address is used on stationery, business cards, or advertisements, is not use of the name as a source identifier.

Remember

"It is not enough for the applicant to be a provider of services; the applicant must also use the mark to identify the named services for which registration is sought." Providing a service which is normally 'expected or routine', in connection with the sale of one's own goods, is not a registrable service.

Recently, the Patent & Trademark Office clarified how it administratively classifies services associated with the World Wide Web. The Trademark Office uses the phrases "connection" provider, "access" provider, and "content" provider to differentiate and classify services rendered via the Internet. A telephone company, or similar entity, providing the technical connection needed for communication is a "connection" provider -- a service classified in Class 38 (Telecommunications). The closely-related service rendered by entities such as America Online®, CompuServe®, Prodigy® or your local "Internet Service Provider" (ISP), is that of an "access" provider -- a service classified in Class 42 (Computer Service). An "access" provider furnishes "multiple-user access to a global computer information network."

If you are not an Internet Services Provider or a Telecommunications company then you are a "content" provider who furnishes information via the Internet, i.e., offers the service of providing information. In such cases, the service offered is an information service classifiable according to the information, e.g., a service that offers business information is classified in Class 35, a service that offers financial information is classified in Class 36, and a service that offers building construction, repair or maintenance information is classified in Class 37.

However, all "content" providers do not offer registerable services vis-a-vis an Internet domain name. For example, Internet domain name locations that simply contain advertisements or other information normally expected or routine in promoting an entity's goods or services are not registerable services. Therefore, Internet domain names must meet the same requirements for registration as all trademarks and service marks. If a domain name does meet these requirements, it will be registered.

How to use a domain name correctly

As a "content" provider you can acquire trademark rights in your domain name if you use the domain name as a trademark and not merely as an address. In order to do this the first step you must take is to accept as a fact the following statement.

Remember

The operation of a website is the service of providing information. If your site only provides information about you, your company, your products or your services then your site is incidental to the operation of your business. You can not secure or protect your right to the exclusive use of a domain name that is only self serving.

Lets start by clearly understanding what it is that needs to be protected. To demonstrate the point, well protected sites have our logo, copyright notice, or service mark notices. We want to protect, as a service mark or trademark, the words in the URL, as it is used in association with the services offered from our website(s).

In order for a web site to qualify for protection it must provide services to others. Simply providing an order entry screen, technical support or product information is not a service you are providing for others but rather a service you are offering for your own benefit. On the other hand; the providing of advice, or how to information is a service to others.

By way of example. This website accepts orders for products and services. This is self-serving. In addition the web site also provides (a) guide on starting your own business; (b) how to articles, (c) links to other sites, (d) an FAQ section, (e) a list of government sites and their URL addresses, (f) a greetings section, etc. These sections of our web site provide helpful information that others can access and derive a benefit. They are not self serving.

If your site announces when your representatives will be in a specific location, offers a guest book, provides examples of how to use something, shows samples of things accomplished by your clients, includes a list of things your clients can do on their own or offers helpful hints and suggestions then you are providing services to the public and thus your use of the domain name is protectable.

Pursuant to the trademark rules of every country no one will be granted the exclusive rights to use, as a trademark, any word or phrase that clearly describes some character, feature or trait of the services marketed in association with the domain name regardless of the fact it is not registered as a trademark. The ".COM" (dot com) portion of your domain name is a character or trait. You can never own this feature.

PROPER USE OF A DOMAIN NAME

The most effective domain is consistent and continuous. A domain name (mark) can fall into the public domain if used carelessly. Protection or registration can become more difficult if the company's use of the servicemark/trademark has been inaccurate.

The best way to prevent a mark from becoming public property is to show that the trademark/servicemark is not merely descriptive of your company's services. It is your badge of distinction and not the name for the service. Here is a collection of rules for your business to follow.

1. Use your Domain Name as an Adjective

   Always use your domain name as an adjective, not as a noun. For example, it is not correct to refer to "services of Trademark-Protection." It is correct to refer to Trademark Protection search services, or Trademark-Protection.org trademark/service mark reports. Be sure to use terms such as "Trademark Protection invites you to visit" or "bookmark by adding trademark-protection.org" whenever you reference your website.

2. No Plurals

   Use your domain name consistently and exactly. Do not use the domain name in plural form. It is correct to say "Order three Trademark-Protection.org Searches and receive the fourth one free." It is not correct to say "Order three Trademark-Protection's and get one free."

3. Capitals - Use UPPER CASE letters

   Unless your domain name specifically uses a lower case initial letter, it should always have a capitalized first initial letter or be set out in all capitals, though we do not like all upper case for its poor appearance and making it sound like shouting too.

4. No Changes

   Do not change the mark through additions, prefixes or suffixes (unless you intend to create another trademark). Do not use the mark with a possessive form: It is not correct to refer to "trademark-protectionS" Services. It is correct to refer to the services offered on the "trademark protection" site.

5. Family of Marks

   If your intrenet business uses a group of domain names which have a single component common to each then creating an association among the various marks may allow you to be able to prevent other businesses from using an otherwise dissimilar mark having the same component. (The basic "Kodak" trademark, for example, has spawned KODA- trademarks, such as Kodacolor and Kodachrome)

If you decide to create a "family" of domain names, and to establish overall protection which is greater than the sum of the parts, follow as many of the following practices as possible:

1. Adopt a highly arbitrary component that is capable of being used, recognized, and protected by itself.
2. Make a conscious effort to use, display and advertise the "family" of marks in such a way that consumers become aware that the family exists and associate the family with the trademark owner. Use advertising techniques such as "Another product in the '[Trademark]' family of computer programs."
3. Advertise in this manner continuously and, if possible, heavily.

These guidelines should be distributed to and followed by all of your employees. To protect your domain names value and keep it alive, it is critical that it be used CORRECTLY. Your failure to observe these rules will result in your inability to defend your domain name if challenged by a trademark holder. In other words, "If you do not follow these rules chances are someone will be successful if they sue you."

TRADEMARK NOTICES

If you want the world to know that a specific domain name is yours then you must give PUBLIC NOTICE of the fact that you have adopted and are using the domain name, as well as all the icons and gifs on the web site, as trademarks. Using at least one of the following notice formats on every new page within your URL is public notice of that fact. In the alternative use one of the notice examples for each trademark used in a prominent place at the top or bottom of every new page.

First - If you own Registered Trademarks

For trademarks registered with the US Patent and Trademark Office, place the ® symbol in the upper right-hand corner of the mark. For marks registered with the Canadian Intellectual Property Office, place the ^tm; symbol in the upper right-hand corner of the mark. DO NOT USE THE ® symbol on marks registered in Canada or any other country.

As an alternative, or in addition to the use of the symbol, give public notice at or near the bottom of the page where the marks are displayed. For marks registered in the USA us the phrase "Registered in the U.S. Patent and Trademark Office" or the abbreviated version "Reg. USPTO." For marks registered in Canada use the phrase "Registered in the Canadian Intellectual Property Office " or the abbreviated version "Reg. CIPO."

Second - Unregistered ("Common Law") Trademarks

Domain names do not need to be registered in order to have legal protection against infringement. To serve public notice that this is your mark place the ^tm; symbol in the upper right hand corner of the domain name. Do not use the ® symbol unless or until federal registration is actually issued in the USA. False use of a public notice of the ® symbol can result in the denial of federal registration or refusal of enforcement by a court.

Third - Exceptions

When it is not possible to use the above notices, a notice on the bottom of the page should identify each of your trademarks. If possible, you should, place a small asterisk in the upper right-hand corner of the trademark, along with the applicable asterisk notices at the bottom of the web-page.

• "* ® the property of XYZ Company. Reg. USPTO" (for US registered marks)
• "* ^tm; the property of XYZ Company. Reg. CIPO" (for CDN registered marks)
• "* ^tm; the property of XYZ Company." (for all unregistered marks used in any country)

When a number of trademarks are used within the same page, a notice such as the following, may be used;

• "GADGET" and "WIDGET" are trademarks of XYZ Company. Reg. USPTO" or
• "GADGET" and "WIDGET" are trademarks of XYZ Company. Reg. CIPO" or
• "GADGET" and "WIDGET" are trademarks of XYZ Company"

It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in comparison advertising.

Fourth - Correspondence

Your objective is to make the domain name stand proud of the rest of the text. Look again at every occurrence of the word trademark-protection on this web-page. In business letters, faxes, e-mail or memos, and on your web site your domain name should be identified by use of capital letters, bold face type, larger font size, different color, italics, or quotation marks. We distinguish our trademark by the use of a hyper-link to our About page. We do not recommend the use of underline or double underline.

MANAGEMENT AND RECORD KEEPING

As the owner of a domain name it is incumbent upon you to not only use the name correctly but also to keep records of such use. In this regard we strongly suggest your web master should also be your Trademarks Coordinator. This person should administer all aspects of your domain name use. They include;

1. Training your employees in proper use of your trademarks
2. Reviewing and clearing all advertising and promotional copy prior to publishing
3. Advising your customers and competitors of your marks and ownership in same
4. Deciding, with the assistance of your trademark agent, whether to register the domain name as a trademark with the Canadian, American or other Trademark Office
5. Deciding, with your attorney's advice, what action to take against infringers

Evidence of First Use of your Domain Name

The day you secure registration of your domain name is not the date the name is used for the first time. The record of registration is only evidence of registration. Use of the domain does not occur until such time as the first visitor arrives at your site. The fact that you advertised and promoted the site is incidental.

Make sure all your employees -- from the mail clerk to chief executive, and particularly all marketing, advertising, packaging, and secretarial employees -- know what trademarks you are using and how to use them correctly. Experience shows a printed trademark policy generally does not provide sufficient reminders unless supplemented with periodic meetings.

Make sure any outside advertising or public relations firms you retain know what trademarks you are using and how to use them. Review all advertising and promotional copy for correct and most effective trademark usage.

Misuse and Infringement

Your employees and customers should watch for misuse and infringement of your domain name. If they visit a site that has your site described as above, then you must contact the webmaster of the site and make certain the narrative is corrected. Misuse of your domain name would include making changes, even unintentionally, or using your domain name as the common name of the goods or services. Infringing marks would include use by another company of a product name or logo that, when used on their product, so closely resembles one of your trademarks as to cause confusion or mistake, or deceive customers.

Your trademark coordinator should collect information on infringement and misuse, and consider (with the advice of a trademark attorney) whether a demand letter should be sent or other action taken. Employees should not take action on their own if they detect misuse or infringement.

Records

Establish a file for collecting documents relating to your mark and trademarks. When it comes to determining who used a mark first, establishing distinctiveness, (i.e. "secondary meaning"), or proving continuous use of the mark in commerce the company with the best documented historical evidence is in the most favorable position. This is critical in the case of a mark that is not registered. Your file for each mark should be used to collect:

1. Records, letters, invoices, receipts and other documents related to the adoption and date of first use.
2. Copies of agreements with outside graphic artists assigning right, title, and interest to the owner.
3. Copies of all advertisements using the mark, dated as of their appearance, together with records of company expenses for that advertising;
4. Yearly summaries of the amount of product sold under the particular mark;
5. Copies of printed promotional material as they are delivered from the printer along with a copy of the invoice.
6. A record of any sites you have requested link to you including copies of the requests.
7. Records relating to any changes in the links, pages, bookmarks, material etc.
8. Any demand letters to others who try to pirate your mark by using the same or a deceptively similar mark.

Once your domain name is registered as a trademark your certificate of registration is evidence of ownership as of the date on the certificate. From that date forward you are not required to prove you used the mark as of a particular start date. However, you may be required to prove that the mark is still in use. To prove the mark is still in use you should maintain at least a 2-year record of all of the above.

The next and last step

Now you know how to use your domain name correctly to secure trademark rights, and have already decided to make the changes to your web site as suggested above, we think you should also give consideration to confirming you are not infringing on the rights of others. For an addition fee of $25 we will prepare a search of both the Canadian and American trademarks data-bases. To order the search go to

Now you have read this article, that you will come to the conclusion you should include a trademark/service mark specialist on your list of professional advisors. The staff at trademark protection, welcomes the opportunity to be your advisor.

If this article has left you with any unresolved trademark or service- mark questions, please send us an email. We also suggest you take the time to learn all about trademarks and trademark protection, who we are, what we can do for you and why you should utilize our fast & low-cost but highly protective "service mark" certificates in particular.

---

Click-Here for secure-order-form to order your Service Mark NOW for valuable Trademark Protection at very low cost and extremely fast! You will receive your Service Mark Certificate upon placing your order via email

Click-Here for Details on how a "service mark" offers significant trademark protection at very low cost and extremely fast!