How to Trademark a Domain Name
How to Trademark a Domain Name is part of our How to Trademark series.
It is possible to trademark a domain name if the domain name is used as a trademark. In other words, if the trademark used on the website or on the goods includes the .com, then you are using the domain name as a trademark and it can be registered with the U.S. Patent and Trademark Office (USPTO).
Can I Trademark a Domain Name?
As stated above, a domain name can be registered if the domain name is being used as the trademark. If the domain name is only being used as URL and not anywhere on the page, then the use should be changed or alternately you can file an intent to use application for the domain name.
Like other trademarks, domain names must meet the following requirements for USPTO acceptance:
- Must be distinctive or have acquired distinctiveness in the minds of consumers.
- Domain name must be used in the sale of goods or services.
- No likelihood of confusion can arise from previously filed trademarks.
Domain names that clear each of these hurdles may be eligible for trademark protection with the USPTO. Once your trademark is registered, you can exclude others from using similar or misspelled names that may cause confusion among consumers (e.g. McDonalds.com vs MacDonalds.com).
Should I Trademark My Domain Name?
If you’re using a website address in such a way that shoppers associate it directly to your products or services, you should definitely trademark your domain name. This will help prevent other parties from attempting to profit from the reputation and goodwill you’ve built with consumers.
Some website owners forego trademark registration because they believe registering a domain alone grants them trademark rights. This is not the case. Only using a domain name in commerce or filing an intent to use application will grant trademark rights in a domain name. Using it in commerce can immediately establish common law trademark rights, and filing a trademark application may establish national rights. If someone infringes on your domain name, your legal remedies are diminished without USPTO registration.
Here are a few of the benefits of trademarking a domain name:
- Creates a presumption of ownership and validity.
- Can use the registered trademark symbol (®).
- Public notice removes defendants’ ability to claim good faith use.
- Can serve as basis for seeking international trademark
- Allows to eventual incontestability.
How to Trademark a Domain Name
The following are the basic steps to trademark a domain name:
1. Perform a Trademark Search
Conducting a trademark search is an essential – but often overlooked – step in registering a domain name with the USPTO. This is because you’re not legally required to perform such a search in order to receive trademark protection.
Trademark searches are meant to find any pre-existing trademark that could cause a likelihood of confusion. This means exact matches aren’t necessary to constitute infringement. If your domain name is dalta.com and you sell sink faucets – like Delta Faucet Company – the simple change of spelling isn’t enough to protect you from exposure to a claim of trademark infringement.
You can use the Trademark Electronic Search System for your search, but this won’t provide a definitive answer. Common law identifiers, business names, domains not registered with the USPTO and many other issues can present problems. That’s why it is highly advisable to have a trademark attorney perform the search. If possible, performing a search before investing in a domain name is even better.
2. Apply with the USPTO
If the trademark search is clear, and you have used your domain name in commerce – or have a bona fide intent to – it’s time to submit your application to the USPTO. While you wait for your application to be reviewed, you should utilize either the unregistered trademark (™) or service mark (℠) symbols to alert others that you intend to protect your trademark.
For the government filing fee, you should expect $250 per trademark class. Once you apply to trademark your domain name, it takes about four months for an examining attorney to review your application. If all your descriptions, specimens, and other application requirements are met, the remainder of the process can move quickly.
If all filing requirements are met and there is no issues, your application will be published in the Official Gazette (OG). This gives third parties 30 days to file a Trademark Opposition against your application. If there is no opposition, you can expect your registration to issue within three months of publication.
3. Monitor Progress
The USPTO has strict deadlines, and failure to meet them can lead to trademark abandonment. This will result in the loss of your filing fee in addition to receiving no trademark protection for your domain name. Although you should receive emails containing notices from the USPTO, if a few months pass and you have not received you should check the status of your application by checking the Trademark Status and Document Retrieval (TSDR) system.
It’s advisable to check the system at least once every three months. This interval ensures you that you won’t miss any deadlines even if a notice from the USPTO ends up in your Spam folder. You’ll also quickly learn about potential issues with your trademark application that may need to be corrected. If any problems arise, you’ll be working directly with the examining attorney to rectify them.
4. Maintain Your Trademark and Police Use
Once your domain name is trademarked, trademark renewals must be filed to maintain the registration. Between five to six years after registration, you’ll need to file a Section 8 declaration to show your trademark is still in use. At this time if possible you should also seek incontestability under Section 15.
When the registration is between 9 and 10 years old, a Section 9 renewal must be filed in addition to another Section 8. After this point, you’ll need to renew your trademark with the USPTO every 10 years after the registration date.
You’ll also need to police use of your trademark during this time. While the federal government grants protections, the onus of monitoring misuse falls on you. If you do notice an infringer, you should immediately have a trademark lawyer send a trademark cease and desist letter. Our experience is that prompt action against infringers leads to the quickest and best resolution. For the earliest notification of infringements, you should utilize a trademark monitoring service.
If you are interested in getting a trademark on a domain name, please contact us today.