Detroit Michigan Trademark Attorney: Not All Domain Names Are Created Equal
A web domain name may or may not identify the specific source of goods or services for sale on the website. A web domain name may be unique, or it may be very broad and generic. A web domain name may be designed to attract SEO hits by naming a product or service type in connection with a geographic area—or it may reflect a specific brand.
One type of domain name is registrable as a trademark with the US Patent and Trademark Office (USPTO), and the other is not.
The underlying difference is simply the difference between which names or slogans are eligible for trademark protection and which are not.
Must Identify the Source of Goods and Services
A name (domain or otherwise) is not eligible for trademark protection unless it identifies the specific source of the good or service it represents. It cannot be deceptive, misleading, or in any other manner intended or effected to confuse consumers as to the source of whatever it is that is being advertised and sold.
In this way, trademark protection is different than copyright or patent protection. The purpose of trademark registration is not to protect the owner of the name, tag-line, or slogan but to protect consumers' right to know what they are buying.
Thus, a domain name which fails to accomplish that will not be eligible for trademark protection.
For example, "CocaCola dot com" would be registrable if it is the webite of the Coca Cola corporation and consumers would thus understand when viewing the site that the soda pop advertised on the site is that which is bottled by that corporation.
However, "Atlanta brown cola dot com" would NOT be registrable as it is generic and does not specifically identify the Coca Cola (or any other cola-producing) corporation.
The domain name must be distinctive enough to notify consumers of the source of the good or service represented.
Similarly, "Koka Kolah dot com" would be deceptive or confusing if used by a rival cola-producing corporation.
The Goods and Services Must be in the Stream of Interstate Commerce
Even if those criteria are met, the mere existence of the right domain name, a trademark registration requires that the proposed name or slogan be in use in interstate commerce to be fully registered.
In other words, since trademark registration protects consumers' rights and not creators' or owners' "artistic" rights, the mark must actually be in use indicating a product or service for sale in interstate commerce (across state lines).
Short of that, there's just nothing to protect!
And the Owner of the Domain Name Must Have Been the First to Use it in Commerce
Further, trademark registration in the United States is offered to those who have been the first to use the name or design in interstate commerce, not to those who simply register the mark first.
Unlike mortgage or deed recording at the county level in Michigan (a "first to file" state when it comes to real estate matters), just because you file an application for registration of a proposed trademark before anyone else doesn't mean that you were the first to use it in commerce.
Successful approval of a registration application by the USPTO depends on evidence provided that you were the first to use the mark.
This is no different for domain names than a company's own name.
Domain Name Trademark Registration: The Bottom Line
The bottom line with regard to the registration of an internet domain name as a trademark is that you should schedule a free consultation with a knowledgeable trademark lawyer to discuss the eligibility of your proposed or existing domain name and the process and costs involved.
The Hilla Law Firm provides free, virtual consultations to prospective trademark clients to provide them the information they need to make a decision regarding trademark issues.