Legal Question in Intellectual Property in Pennsylvania

can you trademark a web domain name that ends with .net and have it protect against anyone using the domain name that ends with .com?


Asked on 9/05/09, 10:43 pm

1 Answer from Attorneys

Sarah Grosse Sarah Grosse, Esquire

Trademarks and domain names are often used hand-in-hand, but you have confused two different issues here. One may obtain trademark registration for a name which is used in conjunction with selling goods or services to the public -- subject to may additional requirements, such as it is not similar to a prior mark, it is not descriptive or generic, etc. One may incorporate their trademark into a domain name, and the trademark owner may have rights to a domain name containing their trademark if someone else has registered the domain name. Whether the domain is TRADEMARK.com or TRADEMARK.net is really immaterial to this determination because it is the TRADEMARK, not the .com or .net, which are owned by a business as a trademark.

Many trademark owners will register domain names defensively, such as their TRADEMARK.net, .com, .info, .biz, .us, etc. The trademark owner may also register similar domains such as MYTRADEMARKPRODUCTS (dot whatever), MY-TRADEMARK (dot whatever). The trademark owner may be able to reclaim these similar domains from cyber pirates, but it is often much easier and cheaper to just register a bunch of similar domains defensively. Note that I am talking about registering domains defensively -- not trademarks (two totally different things).

This may or may not even touch on the issue you are trying to seek advice for. But, this is the best I can do with such a vague question.

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Answered on 9/11/09, 12:02 am


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