Domain names and trademark law
Anne has been trying to put herself through school for the past two years by baking and selling her irresistibly delicious desserts. Her pies have won awards in numerous county fairs, her cookies were featured in a local public television spot, and demand for her healthy “Pineapple Down Under Cake” has come in from as far away as Australia. The desserts are so delicious that some have even alleged that they are aphrodisiacal in their appeal. Anne has decided to capitalize on the Internet’s ability to market her products worldwide at minimal cost, but is concerned with the legal aspects of domain names and trademark law.
A domain name is simply a name that represents the online address for the business. Under a federal statute called the Lanham Act, as well as individual state’s statutes or common law, a domain name can receive protection from use by others. Trademarks distinguish and provide protection for products while servicemarks distinguish and provide protection for services. Since Anne is producing and selling a product, she would want trademark protection for her domain name.
A domain name can receive trademark protection under federal law under specific circumstances. First, it must pass the test of ‘distinctiveness.’ This means that the name must identify, set apart, or convey a difference in meaning from all other domain names. Second, the name must be used only as an adjective, never as a noun or verb. Third, federal protection may only be afforded if Anne’s goods are used in interstate commerce. Finally, the domain name must be either registered with the United States Patent and Trademark office or have acquired a secondary meaning by the public. If a trademark is registered, it should always use the symbol ® following the trademark. If a trademark is not registered, but rights are being asserted, the superscripted letters “TM” should be used.
A domain name can receive trademark protection under state law under certain circumstances. Generally, trademark registration is not required since protection is afforded under states’ unfair competition laws. However, if a state has a trademark registration system in force, protection may only be extended if the trademark is properly registered. There are notable disadvantages for use or registration within a state. First, the geographic reach is limited. Second, state workers are unlikely to know which trademarks are protected in other states or by federal law. Third, a trademark protected under federal law, that has been registered before a trademark is used or registered in a state, would prevail over any state trademark protections. Finally, federal registration after a trademark has been used or registered in a state would secure protection for the federal registrant in all states other than within the state the trademark was previously used or registered.
Generally, if a domain name is a generic common word or phrase, then there may be no protection from others who choose to use the same word or phrase because it fails the test of distinctiveness. However, there are several ways a generic or common name can qualify as being distinctive. First, if the name has been used for a period of time that is long enough to be recognized by the public as having a secondary meaning. Second, if the name is applied arbitrarily in the context of its usage. And third, if the name is creatively applied to the product, but not literally descriptive.
Infringements in domain name usage usually occur when there is confusion by consumers as to the product or services being offered. That is, the domain names may be so similar as to how they are written or sound that what a consumer intends to purchase is not what they actually receive, or from whom the consumer intends to purchase, is not from whom they receive it. Thus, trademark protection allows consumers to seek (or avoid) particular sources of products or services. For example, the domain name “Disney.com” is a domain name that is distinctive enough to receive trademark protection. If Anne decides to use the domain name “Dizney.com,” it could be confusing to consumers. Even if Anne used the domain name “Diz-knee.com,” it could still be confusing to consumers in an audible format, such as over the radio. Therefore, simply misspelling a domain name will provide Anne with no advantage. In order for Anne’s domain name to avoid infringing on the rights of other domain name owners, she must choose a name that is distinctively dissimilar to any other name, both in written and audible forms.
Anne should perform a conflict search in the trademark database operated by the United States Patent and Trademark Office. The website address is “www.uspto.gov” and will search for all registered and pending trademarks. There are also numerous Internet domain name search sites that will perform searches for registered domain names, but names are reported as owned only if the names match exactly. It is strongly recommended that her domain name be federally registered to ensure protection.
If a domain name is already being used and is protected by trademark law, Anne can purchase the rights to use it. Since domain names are considered property, they can be bought and sold through brokers, auctions, and private transactions. The average sale price is approximately $15,000.
Anne may have established trademark rights if she used her business name prior to anyone else. If another party registered a domain name using Anne’s trademark name with the intent to sell the rights to the owner of the trademark, it may be considered cybersquatting. Anne may be able to bring suit for damages, to recover the cybersquatter’s profits, to have the domain name cancelled or transferred to her, and for attorney’s fees and costs under the Anticybersquatting Consumer Protection Act of 1999.
Source: IMENA.com.ua
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