RockStarLaw

WRITINGS, RANTS, PHOTOS AND OTHER STUFF, BY VINCENT KOSTIW.

35 notes

Internet Domain Names as Trademarks or Servicemarks

Registering and using a domain name is easy, just be the first person to register it, or purchase the registration rights from someone else.  As long as you pay your registration fee each year you can use the domain name as you wish, provided you are not breaking the law or infringing on another’s rights.  However, using a domain name in commerce to the point that it can receive federal trademark registration is not so easy, and in some cases not possible.

How are trademarks different from other types of intellectual property?

Trademark doctrine is also different than other types of intellectual property law such as copyright or patent, in that copyright or patent law is designed to protect you or your business, while trademark law is designed to protect the public.

Trademark law is also “use it or lose it” in nature.  You must use the trademark in interstate commerce as an identifier of your goods or services to obtain and keep federal trademark registration.  You may only use the federal registration symbol “®” when you have a current federal trademark registration.  If you stop using the trademark in interstate commerce for an extended period you risk losing your rights in the mark.

What is the difference between a trademark and a service mark? 

Although the terms are often referred to as ‘trademarks’ or simply ‘marks’; a ‘trademark’ includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.  In short, a trademark is a brand name.  A ‘service mark’ is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

Some of the benefits of federal trademark registration are: constructive notice to others of your claim of rights in the mark; evidence of ownership of the mark; the ability to invoke the jurisdiction of federal courts in case of infringement; federal registration can be used as a basis for obtaining registration in foreign countries;  and a notice of federal registration may be filed with U.S. Customs Service to help prevent importation of infringing foreign goods.

Does the addition of ‘.com’ make my name a trademark? 

Internet domain names raise some unique trademark issues.  A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. 

Portions of the uniform resource locator (URL) including the beginning, (“http://www.”) and the top level Internet domain name (TLD) (e.g., “.com,” “.org,” “.edu,”) function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function.  Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable.  If a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must initially refuse registration without a showing of secondary meaning in the mark.  For example: the mark is ‘SOFT.COM’ for facial tissues.  The examining attorney must refuse registration.  The mark is ‘NATIONAL BOOK OUTLET.COM’ for retail book store services.  The examining attorney must refuse registration.

Similarly, if a proposed mark is composed of generic term(s) for the applicant’s goods or services and a TLD, the examining attorney generally must refuse registration on the ground that the mark is generic.  For example: the mark is ‘TURKEY.COM’ for frozen turkeys.  The examining attorney must refuse registration.  The mark is ‘BANK.COM’ for banking services.  The examining attorney must refuse registration.

However, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole, including the TLD indicator.  The Court of Appeals for the Federal Circuit cautioned that, while “[t]he addition of a TLD such as ‘.com’ or ‘.org’ to an otherwise unregistrable mark will typically not add any source-identifying significance,” this “is not a bright-line, per se rule.  In exceptional circumstances, a TLD may render an otherwise descriptive term sufficiently distinctive for trademark registration.”  In Re Oppendahl & Larson LLP, 373 F.3d at 1177, 71 USPQ2d at 1374 (Fed. Cir. 2004).  See also In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet).

Source Identification.

A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier.  The mark as depicted on the specimens submitted to the Untied States Patent and Trademark Office of the mark as used in interstate commerce, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website.  See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998). 

In Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant’s domain name or the location on the Internet where the applicant’s website appears, and does not separately identify applicant’s services, does not function as a service mark.  The applicant’s proposed mark was ‘WWW.EILBERG.COM’.  The specimen submitted was the business card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O. Box 7, Jenkintown, Pennsylvania 19046, 215-885-4600, Fax 215-885-4603 email whe@eilberg.com, Patents, Trademarks and Copyrights, www.eilberg.com.

The Board affirmed the examining attorney’s refusal of registration on the ground that the matter presented for registration did not function as a mark, stating that: “[T]he asserted mark, as displayed on applicant’s letterhead, does not function as a service mark identifying and distinguishing applicant’s legal services and, as presented, is not capable of doing so.  As shown, the asserted mark identifies applicant’s Internet domain name, by use of which one can access applicant’s Web site.  In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant’s Web site appears.  It does not separately identify applicant’s legal services as such”. 

This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or service marks.  For example, if the applicant’s law firm name were, say, EILBERG.COM and were presented prominently on applicant’s letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registrable.

Trademark law is designed to protect the public.  It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark, not the applicant’s intent, hope or expectation that it does so.  The mark must function as an indicator of a source of goods or services.  An Internet domain name by itself is nothing more than an Internet address.  If a domain name is proposed as a trademark, but is used in a way that would be perceived by the public as nothing more than an Internet address where the applicant can be contacted, registration must be refused.

Have questions or need help?  Get in touch with Vincent.

Filed under domain names trademark servicemark rights TLD Eilberg

  1. rockstarlaw posted this