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Domain Names & Trademarks

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PUBLISHED APRIL 2000

by Ivan Hoffman, Publishing Attorney —


Ivan Hoffman

If you’re a writer, publisher, Web site designer, or site owner and if you own, claim to own, use or want to use intellectual property on the Internet, then you must have at least a short but functional knowledge of how the United States trademark, copyright, and other laws—as well as various state laws—may apply to you. There’s an intimate relationship among your rights and the rights of others. At any moment, you may be both a user of other’s protected materials and a creator of your own. Both they and you deserve to have your intellectual property rights protected.

In addition to the more traditional logos and designs that are the subject of trademark law, domain names are now also subject to being trademarked if they otherwise qualify as marks. Indeed, the rules for what may and may not qualify for trademark status are not all that different except that the Internet presents further issues.


Some Points to Consider

Before discussing the issue of how one can obtain a trademark in a domain name, it might be helpful to first explain how the Internet impacts upon regular, real-world marks. If a mark in the hard-copy world is also being used in relation to goods or services provided via the Internet, the United States Patent and Trademark Office (USPTO) policy is that any registration for such Internet use is to be filed under the same classifications as apply to the use of the mark in the hard-copy world. In other words, the registration is classified under the same categories as the subject matter of the goods or services. How the applications are filled in vary with the subject matter of the goods or services, but in essence, the use on the Internet is another version of the underlying, real-world uses. So when applying for a mark that is used in both the real world and on the Internet, the classifications would be the same but the manner of use would have to be expanded to include use via the Internet.

On the other hand, if a mark is used solely in relationship to the Internet—such as in the case of a domain name—and there is no corresponding use in the hard-copy world, then it appears that a separate registration classification may be available to offer protection to the mark as it is being used on the Internet. However, the use of a domain name must not simply be as an address or location but must be used to identify the goods or services of the person or firm claiming the mark which goods or services are provided via the Internet. Thus the mark must be used not only as a domain name but in advertising, marketing materials on the Internet, and perhaps in the hard-copy world as well. The domain name must become an integral part of the goods or services so provided in order for it to be the subject of a registration. This, of course, is in keeping with the purpose of marks, which is to identify the goods and services of a particular source.

So, for example, since many publishers want to have domain names that track the name of their company, those publishers should plan on marketing their company name in the form of the domain name via the Internet as well as including the domain name in all hard-copy advertising and marketing materials as well, including their books.

Moreover, since publishers may run into conflicts with the names of other publishers, it is very wise for those publishers, before choosing a name for their company, to do a trademark search in addition to perhaps checking Books in Print or other more traditional sources. A thorough check performed by a search firm will also review Internet domain names to see if there are others who are using the name, if for another company purpose.

Additionally, one of the key factors in determining whether any mark is registerable is the distinctiveness of the mark. Thus, in contemplating a domain name, whether as a publisher, site owner, Web designer on behalf of a site owner, or otherwise, the more distinctive the domain name, the more chance there is that it will qualify as a mark. Even though someone has a domain name, if it is merely descriptive, non-unique, and otherwise merely provides information as opposed to identification, the less chance there will be to claim it as a mark.

Furthermore, it is very advisable to seek federal registration for the domain name as a mark since that may then provide protection not only on the Internet but in the hard-copy world as well. In other words, like all other trademark owners, should someone off-line seek to market and promote a product or service that may lead to confusion in the minds of the public with your domain name, you may be able to prevent that conflicting use. Such registration provides many other benefits (see “Trademark Law: An Overview” on my Web site.)


Domain Names as Infringing Marks

Conversely, to the extent that you have obtained a unique domain name but have not obtained a federal registration for it with the USPTO, you may find yourself at the wrong end of an infringement claim. The holder of a mark in the real world may notify you that your domain infringes upon their use of their mark in that your mark has the potential of confusing the public as to the origin of your Web site and creates an implication that the mark’s holder is somehow involved in or with your site.

The legal issues in this area are not all that different from those that would be involved in a real-world trademark dispute. Theclaimant must show that your use of the domain and the site to which it points are likely to create the above confusion and/or, in certain instances of “famous” marks, dilute the value of their mark.

Additionally, you may be subject to a claim by a trademark holder that a domain that you have obtained, even if you are not using it, should belong to that holder. The general rule is that first to register owns a domain. However, under certain circumstances, the holder of a mark that was a registered mark before you obtained your domain may be able to prevent your use of that domain, at least on a temporary basis, until it is decided by a court whether or not you should be allowed to do business under that domain. That decision would, of course, be made on the basis of the above trademark law issues such as confusion in the minds of the public, dilution, and so on. Pending that court determination or a settlement of the matter, if the situation fits the criteria established by Network Solutions, Inc., NSI may suspend your use of the domain and that action may be the de facto end of the matter even without a judicial determination.


Conclusion

There are many other issues that trademarks of all sorts present and this article is certainly not intended to be exhaustive of those issues. However domain names are an area of Internet law that is rife with potential for litigation. By knowing your rights and obligations as both a trademark holder and domain name user, you may be able to avoid the expense of such litigation. Doing the research before making commitments to a name, mark, and the like may help you avoid unnecessary cost and trouble.


Ivan Hoffman is a publishing, copyright, Internet law, recording, and music attorney as well as a published writer and author. He practices in the Los Angeles area. You may reach him at ivan@ivanhoffman.com or 818/342-1762.

This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws. No portion of this article may be copied, retransmitted, reposted, duplicated, or otherwise used without the express written approval of the author.

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