How Do I Trademark a Domain Name?
By Shannon Moore
The process for filing for a trademark for a domain name is similar to any other name in terms of comprehensive research and analysis being a necessity.
Comprehensive research consists of looking at marks that are similar in Sound, Appearance or Meaning in the pending & registered Federal AND State trademark files as well as the US National Common-Law files.
There is one big caveat when it comes to trademarking domain names and it has to do with usage of the domain name.
"A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier," so says the USPTO. Okay, but what does that mean?
Basically, as long as your domain name is the name of your product and/or service, it's likely registrable. Let's look at some examples to illustrate this:
Example: The online seller, Amazon.com, has a Federal trademark registration for Amazon.com because it's the name under which they conduct business. Take a look at their site and you will see that the name is always shown with the .com extension.
Example: The insurance provider, Esurance, has a Federal trademark registration for Esurance because it's the name under which they conduct business. Take a look at their site and you will see that the name is always shown without the .com extension.
It really comes down to what you're putting out there in the marketplace. Are your customers going to come to know you & your products/services by your domain name? When you answer the phone, will you be saying XYZ.com? Answer these questions and it will become easier to understand what the next step to take is in trademarking your domain name.
Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at www.tmexpress.com.