Domain Names as Trademarks

Domain names are comprised of a generic top-level domain name (TLD) and a second-level domain name. Using a domain name does not necessarily create trademark rights or act as a substitute for securing trademark rights.

§ Example of TLDs: .com, .edu, .net

§ Second level domain name is what comes before the TLD (.com)

THE RULE

When a trademark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD (.com) have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address.

A domain name can only be registered as a trademark if it functions as a source identifier.

The mark as depicted on the specimens must be presented in a manner that will be perceived by potential purchasers as indicating source and not merely as an informational indication of the domain name address used to access a web site.

If the term only identifies the location on the Internet where the web site appears, and does not separately identify the product or service, it does not function as a service mark.

It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark, not the applicant’s intent, hope, or expectation that it do so. If the ordinary customer would think the mark is nothing more than a web address for contact purposes, registration must be refused.

§ For example, it is only an Internet address if it is listed merely as part of contact information.

EXAMPLES

§ In the case In re Eilberg, 49 U.S.P.Q. 2d (1998), www.eilberg.com was held not registrable for an attorney because the mark merely indicates the location on the Internet where the web site appears, and does not separately identify the legal services. The mark was used on the attorney’s letterhead and business cards in the following manner:

If the name of the law firm itself was EILBERG.COM and it was prominently displayed on the letterhead and business cards as the name under which legal services were rendered, then it might be registrable.

§ www.amazon.com is registrable.

§ www.expedia.com is registrable.

IN PRACTICE

To ensure that a domain name can be protectable under trademark law, the mark holder has the obligation to protect the goodwill in its investment.

§ By maintaining the quality of the goods or services it markets through websites employing the domain names.

§ By guarding against infringements that might narrow its rights.

§ Trademark owners need to control the use of their trademarks on the Internet, both in domain names and on websites.

POLICY

The purpose of these rules is to promote free competition in the marketplace, while at the same time rewarding innovation.

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