Does trademark protect domain names? This is a question about selecting and obtaining trademark protection of a domain name and slogan for a website.
Los Angeles, California
Question: I am looking to come up with a domain name for my new website. The goal of this domain is to help the site develop into a brand. That the name will be memorable for users to come back and remember. I have hired a professional company that specializes in coming up with these names as well as slogans for me to use. The concern is that when they provide me with this list to choose from of names to use that another company somewhere in the world is using that name. I need your advice on how I should avoid this problem.
Answer: To avoid the issue of trademark infringement when adopting a brand name and domain name that someone else is using, the best practice is to conduct a trademark search and clearance report, and receive consultation from an experienced trademark attorney on the trademark-ability of the brand of your choice. Assuming the mark is protectable, the attorney can advise you on securing trademark registration, domain names, and social media properties under the chosen moniker, and prepare and file the trademark registration with the United States Patent and Trademark Office.
Owning a federal trademark registration on the Principal Register provides several advantages, including:
- Public notice of your claim of ownership of the mark;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the mark in federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the United States Patent and Trademark Office’s online databases.
To get a better understanding of how trademarks, brands, slogans, company names, domain names, and social media usernames work hand in hand legally, and operating from a marketing standpoint, see my blog on “What’s in a Name? Trademarks and Branding in the Digital Age“, and visit our trademark registration page for more information.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; email@example.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2013. All rights reserved.