How to Protect your Business with a Trademark Domain Name

Protect Your Online Business Domain by trademarking your domain name

What if I told you that your business runs a (not small) risk of getting into a trademark infringement dispute? Getting a trademark domain name is one of the things which is often overlooked, but very important for your business.

Legal protection in general is something which most online small businesses forget about.

Most people creating a web based business consider what they should do to protect their website content, but commonly overlook another risk, one that may be greater and is increasing as online markets become more crowded -- the risk of trademark infringement.  

But what steps can I, a small business owner take, to protect and trademark a domain name?

Likewise, as online markets become more crowded, the amount of quality domain names is rapidly disappearing and the temptation to register increasingly similar domains becomes greater.

When most bloggers or businesses start building their online presence, their worry focuses on preventing people from stealing their content.

Not only are copyright notices commonplace on webpages, but website terms of use often limit or restrict use of website content as a condition to using the site.  Despite a plethora copyright notices, many fail to take steps to protect trademarks and domain names.

Unfortunately, many people confuse copyright protection with trademark protection.  

Copyright protection primarily protects the expression of ideas, such as the way concepts are expressed in a book.  However, copyright does not protect a single word or catch phrase that someone may associate with their business.

Copyright also doesn’t protect words used for domain names.  

Trademarks, on the other hand, can protect words, logos, and catch phrases used in branding as source identifiers for a business and its products. Trademark registration is a good way to strengthen and protect your words, logos and tag lines you use to distinguish your business from other businesses. The gist of a trademark is to protect against confusion among consumers.  

Domain name registration is not the same as trademark registration

Some businesses make the mistake of confusing domain name registration or usage with trademark registration or usage.  Registering a domain name does not give rise by itself to trademark rights. In fact, use of a domain name alone does not necessarily give rise to trademark rights in a mark comprising the domain name.

Thus, simply registering or even using a domain name may not qualify a business for trademark protection.

Not all domain names can be protected as trademarks, but all online businesses should evaluate whether or not they can do so as early on in the life of their business as possible. This is particularly true for any business, not just “brick and mortar” stores that migrate to an online business model.

Often when a' brick and mortar' business goes online, their domain name is protected by their trademark if the domain name is the same as their trademark. Walmart was doing business before Al Gore invented the internet. Walmart’s trademark rights acquired through long extensive use of the mark WalMart provided it an advantage when it started an online presence. These rights provide Walmart legal remedies against someone seeking to register the domain name Walmart.com or similar domain names.

How does trademark registration on a domain protect a blogger or small business?

So how does seeking out a trademark registration actually help and protect, you, an affiliate blogger, or just plain blogger?

Yes, the process of choosing and registering a trademark benefits a business in two major ways:

(1) seeking to register a trademark helps you discover similar third party rights so you can avoid infringing someone else’s trademark, and

(2) it gives you greater legal protection to prevent someone from infringing on your trademark.

Avoid Infringing Others’ Trademarks.

Prior to filing a trademark application, you should have a trademark search performed to ensure there are no registered trademarks which with your domain name or website may conflict and to make sure there are no common law uses of any similar marks creating an unreasonably high risk of infringement.  

A similar search should be done before selecting a domain name.

If you build a website that sells trail-running shoes and you choose the domain name rockrunner.com for your website, and if there is a company across the country, that you don't know about, which makes a brand of shoes called Rock Runners, you could risk being sued for trademark infringement and possibly for cybersquatting.

A trademark search would let you know this potential risk before you put a lot of time and money into developing a website. If you do develop a website using an infringing domain name, you can be forced to stop using the domain name and could be subject to statutory damages and attorney fees.

Protect Yourself against Trademark Infringement

When you are registering your domain name, you are given the option to protect your brand by buying other extensions of your domain name such as, .info, .org, .biz. If you have a properly registered trademark, buying those domain extensions becomes less necessary.

Not all Domains Qualify for Trademark Protection

If you have a domain name that is merely descriptive of the services or products you provide, such as dogstore.com for a website that sells dogs and dog accessories, your domain name will probably not qualify for trademark registration or protection.  

You may still want to use a domain name that is not trademark protectable for other reasons, such as SEO. But keep in mind that if you want trademark protection, you will want to avoid using brand marks that merely describe what you do.

Not all Domains Need Trademark Protection

There are a couple questions you should probably consider when selecting a domain name for your website. According to trademark attorney Perry Clegg, founder of www.trademarkaccess.com, you should consider the following questions when selecting a domain name.

  1. Can I obtain the domain name with a quality or trusted domain name extension such as .com?
    If you can’t find an upper-tier domain extension, it’s probably because the name is heavily used, or someone has bought rights to all the extensions in an effort to protect their brand. The harder it is to find a certain domain name, the more likely it will be trademarked or protected.

  2. Is my primary purpose for the domain name to identify my goods and services or to identify my brand?
    If your domain name was chosen with the intent to identify your brand, then trademark protection is something that you should consider. A domain name that identifies goods or services may not qualify for a trademark. A domain name that identifies your brand probably will. This would be an ideal candidate for legal protection.

  3. Does the SEO value of the domain name outweigh any disadvantages or weakness in the trademark value of the domain name?
    Do you want a domain name that is going to be strong in SEO value? If you are looking for a domain name that is very strong in SEO value then you may have to sacrifice the ability to trademark that domain name. If you want a domain name that is going to be the ideal brand name, it may be a better trademark, but not an optimum for SEO.

  4. Do you plan to brand your website, using the same name as your domain name?
    For example, will the title of your website on your home page be The Dog Store if you are using the domain dogstore.com or will you have another brand name, such as Rover’s Dog Accessories? If your brand is the same as your domain name, then you will want a trademark registration.

  5. Have I conducted a trademark search to make sure the domain name doesn’t infringe another person’s rights?
    If you have done a trademark search and you are sure you aren’t infringing on another companies rights, then you may want to trademark your domain name.

  6. Is the domain name short?
    The shorter the domain name, the more likely it is to be infringed. Short domain names are rare. Short domain names with a top- level extension are very rare.

  7. Is the domain name pronounceable?
    If the domain name isn’t pronounceable or catchy, then there probably isn’t going to be much need for a trademark registration.

  8. Is the domain name intuitive?
    If your domain name isn’t descriptive but something that you would type in while looking for your product or service, then I would consider a trademark.

Should You Hire an Attorney to File Your Domain Name Trademark

Any attorney will tell you that you should always hire an attorney. When it comes to filing your own trademark, you can do it yourself. There are two places in which hiring an attorney is better, but it is not necessary.

The two times a trademark attorney is advantageous

A trademark attorney may have better access to trademark- search tools increasing your chances of getting your trademark approved and decreasing your chances of infringement.

However, there are free tools that can get you started.

The second situation is after you have filed your trademark and the USPTO’s examining attorney has evaluated it. The examining attorney may send an office action. Office actions come in two types a non-substantial and substantial.

A non-substantial does not deal with a question of law; it could be that the attorney is requesting a different sample, or wants you to file in a different category. They are fairly easy to deal with.

A substantial office action is significantly harder to overcome. This office action deals with questions of law. The examining attorney may think your trademark doesn’t qualify for legal protection, or thinks it may infringe on another individuals trademark. In a substantial office- action proceeding, it is not necessary to have an attorney, but you are more likely to succeed if you do.

How to File your Own Domain Trademark?

There are 4 major steps you must take if you are filing your own trademark registration.

Step 1 Create the Trademark

Come up with your trademark idea and create your trademark. Your trademark may be a phrase, a name, a logo or both. It will be something that marks your business, goods or services.

Step 2 Perform a Trademark Search

When you start searching, do a broad search first. Start with Google. Do an image search and a web search. This will let you know if something is already taken or already in use. If something comes up that is similar to what you want, it doesn’t always mean you can’t use it, but you should probably make a back –up plan.

If you can’t find anything in a broad Google search, then you will want to get more specific. The next step in the search process is to use the USPTO’s Trademark Electronic Search System (TESS). When you search, use the word or phrase that you want to trademark. Once you are done, go back and do the same searches using minor variations and slight misspellings.

Step 3 Filling out the Trademark Application

Log- on to the USPTO website and use the TEAS system.  There are three options to fill out in the application. You will want to choose the TEAS Regular. It is more expensive but the others are more strict and complicated in the filing procedure.

You will need to choose the basis for your application. Out of the four options, you will most likely choose between 1 or 2. The first option is if you are already using the mark in connection with business. The second option is if you intend to use it but are not using it yet.

The next thing you will have to do is to choose the class of goods and/or services. There is a list on the USPTO website that will provide a number for each class. If your business provides goods, then you will place the number after a G. If you provide services, then you will place the number after a S.

The final step is providing a description. Your description should be very specific. If you are currently using your trademark, you may need to provide an example.

Step 4 Respond to Any Office Actions

Once you fill out your trademark application, you will have a lengthy wait. It is not uncommon to wait for a year in order to hear back from the USPTO. You may get requests for more information and it is best to respond to these in a timely fashion. You may also get an Office Action. This is usually a form of rejection for your trademark. They can be either substantial or non-substantial. How you respond to these will often determine whether your trademark is approved or not.

After step four, it is just a waiting game until it is denied or approved. Either way you will be notified.


Trademark Law Resources

If you choose to do it trademark a domain name yourself, rather than hire an attorney, you can find lots of resources available online. The most reliable resource is the USPTO website. Occasionally there are clinics or patent and trademark centers in cities or states near you. This information is also readily available on the USPTO website.

Trademark Access does offer a few free trademark application filings every month. If you choose to take advantage of that program, there is more information here.

This is sponsored post courtesy of Clegg IP Law.

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