Legal Question in Intellectual Property in California

Questions regarding trademarking of a website address:

In my hypothetical scenario, let's assume someone has bought the domain name of a website ( for instance). The domain is owned by an individual or business, but is not operational. The website is also not trademarked. In this hypothetical scenario, if I filed paperwork to trademark with the US Patent Office how would that affect the current owner of the domain rights? Would they be forced to legally relinquish ownership of the domain name to me as the trademark owner?

Asked on 3/03/23, 10:40 pm

1 Answer from Attorneys

Frank Natoli Natoli-Legal, LLC

A domain or URL is really just an address in cyberspace. It may contain a trademark like, but in itself does not convey trademark rights. So if you see that someone has the mark you want to use in their domain, this is a good indication that they are in use with the mark, but it is not dispositive. But if they are using it they can claim prior use rights and even petition to cancel your federation trademark registration for the same within the first five years. Further, if they owned the domain prior to your trademark registration then you have no claim over it UNLESS they begin using it in bad faith, that is in a way that infringes on your trademark rights.

It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the NY secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.).

Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.

I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.

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Answered on 3/06/23, 7:40 am

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