In deciding whether to file a trademark application to protect your domain name, the first step is to determine whether you use your domain name as a trademark. If your domain name is only used as the Uniform Resource Locator (“URL”) (i.e., http://www.example.com) to indicate an address on the World Wide Web, then you are not using your domain name as a trademark. Conversely, if you are using your domain name as an indicator of the source of the goods or services you provide, then you are using your domain name as a trademark. If you are using your domain name both as a URL and as an indicator of the source of the goods or services you provide, then you are still using your domain name as a trademark.
Some examples should help clarify this. If you go to Dell’s website (http://www.dell.com), you will see Dell’s logo in the top left hand corner of the website, which consists of the word DELL in blue inside a blue circle. There is no logo or trademark for DELL.COM. In other words, Dell is using DELL as a trademark but not its domain name DELL.COM even though its website is located at http://www.dell.com. Therefore, it is no surprise that, when you conduct a trademark search at the U.S. Patent and Trademark Office (http:/www.uspto.gov), Dell has not filed a trademark application to register DELL.COM. On the other hand, if you go to Amazon’s website (http://www.amazon.com), you will see Amazon’s logo in the top left hand corner of the website, which consists of the words AMAZON.COM with a yellow arrow underneath it. Amazon clearly uses its domain name as a trademark. Therefore, it is no surprise that, when you search trademarks at the U.S. Patent and Trademark Office, Amazon has filed a trademark applications [Q: one or more – “a” or plural applications?] to register AMAZON.COM. This may go without saying, but when a domain name is used as a trademark, the initial portions of the URL address for the domain name (http://www.) are not included in the mark.
If you are using your domain name as a trademark, then you must decide whether your trademark is capable of being registered. In this regard, trademarks consisting of domain names are really like any other trademark because you have to ignore the top-level domain (“TLD”) in the analysis. Therefore, you will essentially ignore the .COM, .NET, .INFO, etc. portion of your trademark (in fact, the U.S. Patent and Trademark Office will make you disclaim the exclusive rights to the TLD in your trademark application).
In order to determining whether your domain name is capable of being registered, you must evaluate whether your domain name is distinctive once the TLD is ignored. While distinctiveness is a legal term of art in trademark law that cannot be covered in great detail here, there are essentially three categories of distinctiveness when it comes to trademarks. First, there are trademarks that are inherently distinctive. Second, there are trademarks that are non-inherently distinctive but can acquire distinctiveness. And third, there are designations that have no distinctiveness and can never acquire distinctiveness.
Inherently distinctive trademarks include fanciful trademarks, arbitrary trademarks, and suggestive trademarks. Fanciful trademarks are words that are invented and do not exist in language (e.g., Xerox). Arbitrary trademarks are words that exist but that have nothing to do with the goods or services provided under the trademark (e.g., Apple for computers). Suggestive marks suggest a characteristic or quality of the goods or services but do not directly describe it (e.g., Greyhound for bus services suggests speed).
Non-inherently distinctive marks that can acquire distinctiveness over time include descriptive marks. Descriptive marks directly describe a characteristic, ingredient, or quality of the goods or services being provided under the trademark. For example, HEALTHY CHOICE for nutritious foods would be descriptive. Such descriptive types of trademarks cannot be registered initially. Over time, however, as the trademark owner sells and advertises its goods or services under the trademark, the descriptive trademark can acquire distinctiveness if the consuming public begins to associate the trademark with the owner.
Generic terms are designations that have no distinctiveness, can never be distinctive, and can never function as trademarks. For example, AUTOMOBILES for cars could not be a trademark because it is the generic term for cars.
In conclusion, if you are using your domain name as a trademark and if your domain name (without the TLD) is inherently distinctive or if it is descriptive but has acquired distinctiveness as a result of long-term use, then your mark is capable of being registered and you should seriously consider filing a trademark application to register it, noting that there are other requirements for registration that are not discussed here, such as your domain name not being confusingly similar to a prior registered or pending trademark.
Bruno Tarabichi of the San Jose, CA firm of Owens Tarabichi focuses his practice in the area of trademark law. Mr. Tarabichi is also a member of the LawGuru Attorney Network.