Trademarks and Domain Names

[gboethin]

Hi all. I recently purchased a domain name that's a catchy combination of two words followed by a '.com' (i.e., catchyword.com). I'm setting up the site right now. The question I have is, do I need to trademark the word itself, and/or the domain name?

I've searched the USPTO database for the word and found no reference to it. While I was there I searched for some well-known domain names like Ebay and Facebook, just to see what these major companies had done. Both had trademarked their domain name and the name of their company.

My biggest concern would be having someone else trademark the word, and possibly use legal action to get the domain name from me. I've heard of this happening. So mainly, I just want to be sure that I couldn't lose the domain name.

Then I got to thinking... I have a few other websites that are fairly well-known in certain niches. One is another pretty catchy word. I'm the 3rd or 4th owner of the domain name, and I noticed that a previous owner had trademarked the domain name itself in 2002, but this had been cancelled. It kind of made me wonder... should I get a trademark for this domain name?

Thanks in advance!
GreggWhat is the name of your state (only U.S. law)?

 

[divgradcurl]

You don't "trademark" something. You obtain rights to a trademark by using the mark in commerce to identify your goods and services. If you intend on branding your goods and services "domainname.com," then you would want to register "domainname.com."

If all you are using is "domainname" without the ".com" or whatever, then you register just "domainname."

If you are using both, you register both.

 

[gboethin]

Thanks for the reply. Let me try to clarify by using as an example for a question. Let's say that someone had bought the domain name "Ebay.com" before Ebay had, with the idea of doing something totally different. Then the people who created the Ebay we know came up with the idea and the name, only to realize that the domain name had already been purchased. Could they have then trademarked the name, being as it wasn't already trademarked, and then used legal action to get the domain name from the person who had previously purchased it? If I understood correctly, things like this have happened, and that's my main concern.

Thanks again,
Gregg

 

[divgradcurl]

Thanks for the reply. Let me try to clarify by using as an example for a question. Let's say that someone had bought the domain name "Ebay.com" before Ebay had, with the idea of doing something totally different. Then the people who created the Ebay we know came up with the idea and the name, only to realize that the domain name had already been purchased. Could they have then trademarked the name, being as it wasn't already trademarked, and then used legal action to get the domain name from the person who had previously purchased it? If I understood correctly, things like this have happened, and that's my main concern.

Thanks again,
Gregg

If someone purchased Ebay.com with the intention of using it for their own purposes unrelated to Ebay, and before Ebay got big and popular, then it's likely that Ebay would be unable to take control of the domain through the courts.

If Ebay was already an established mark, and someone bought the domain, even to use if for their own bonafide non-Ebay-related purposes, that's a tougher call.

But the main point of my response was this -- registration does not give you any rights, it only gives a government stamp of approval to rights you already have (or intend to obtain, in some cases). Use of the mark in commerce is what gives you rights to a trademark. If you use both the mark and the mark as part of a domain name to promote your business, you would obtain rights to both as trademarks. If you only use the mark, then anyone who later tried to buy a domain that included your mark would be potentially infringing on your mark, depending on the circumstances.

If you are concerned that someone else might try and register your domain name to use as a mark, well, since you are a bonafide preexisting user, you would have little to fear.

 

[gboethin]

Thanks again! This is starting to make more sense. In this case, this domain name isn't the name of a company I'm starting, and there won't be any of what I'd define as "commerce" that goes on at this website. If the website is a hit I'll place ads on it, but I won't be manufacturing or selling my own products. It's basically an entertainment website.

If you are concerned that someone else might try and register your domain name to use as a mark, well, since you are a bonafide preexisting user, you would have little to fear.

I'm not concerned about someone buying a domain name that might include my domain name, the way that, once again, Ebay tends to be (and often uses legal action to stop others from using a domain name that contains "ebay"). Your answer to my example made sense to me, and I'd really hoped that's the way things worked.

Just to clarify for anyone else who might have a similar question... I was concerned that it might be possible for someone to use legal action to take a domain name from me by registering a trademark that contains my domain name. Evidently this isn't the case, and the fact that I've purchased this domain before any trademark exists containing this domain name means that I don't have to worry about losing it. Whereas, if you register a domain name that contains an already trademarked word or phrase you can actually lose it.

Let me know if I got that wrong... and thanks for the help!