This article deals with domain name registration and “use in commerce” requirements, generally. It is not legal advice on your individual situation and may not be relied on as legal advice. Each situation will be fact-specific and there is no one-size-fits-all advice. Contact an attorney to discuss your specific trademark.
In today’s digital age, most prospective business owners want an easy-to-remember-domain name. Because good domain names can be so scarce, you, as a prospective business owner, may think of a name, and immediately purchase the domain names. You may even make branding decisions based on the availability of that domain name. Despite what some business owners may think, trademark rights do not begin with a domain registration. While this may seem counter-intuitive at first, registering a domain name, without more, does not give business owners any trademark rights in that word or phrase against companies that use a similar name for similar goods or services after the domain name is registered.
Business owners should file for trademark registrations as soon as possible and develop a strategy to effectively protect their trademarks.
Trademark rights are based on actual commercial use, not domain registration. So what is “commercial use”?
One of the tenants of trademark law is that trademark rights in the United States are based on use. While that may seem simple, the “use” in the legal sense might not mean what you think. So what does “use” mean in the context of trademark law?
For products (e.g. cell phone cases, apparel, consumer electronics)
For products, “trademark use” means that you are regularly selling products to real customers across state lines. What “regular” means will depend on your industry. If you sell one airplane engine every year, you may still have use. If you sell one cell phone case every year, you might not have use. “Real customers” means that you can’t sell products to friends, family, or employees for the purpose of establishing trademark use. “Across state lines” is because trademark law is a federal law, meaning that, in order for Congress to regulate it, it needs to effect “interstate commerce.” There are many many intricacies at to what is, and isn’t interstate commerce (so contact a trademark attorney to learn more.)
Where you place the trademark matters too. The trademark, whether its a word, phrase, or logo, needs to be used as a brand in connection with the product. Typically, this means on the tag, hang-tag, product itself, product packaging, or similar place you would expect to see a “brand.” There are a lot of exceptions and other considerations, so discuss with a trademark attorney regarding your specific trademark in your specific industry.
For services (e.g. business consulting, marketing firms, blogs)
For services, “trademark use” means you have “rendered” your services to real customers across state lines. For example, if you have a blog, then your “use in commerce” begins when regular readers start reading the blog from around the United States. If you have a marketing firm, your “use in commerce” may begin after you start work for an interstate client. This is important, because offering services is not enough. Clients, customers (or in the case of a blog, readers) but be using the service.
The exception to this is “reserving” rights with the USPTO through an “intent-to-use” application, which allows you to “reserve” rights for up to three years, so long as you have an “intent to use” the trademark in commerce on your specific goods and services.
Domain name registration is not, by itself, a “commercial use” or “trademark use”
All of this is to say that domain name registration, by itself, does not hit any of the best practices listed above. Registering a domain name does not connect it to specific goods and services. It doesn’t offer anything for sale or allow a customer to purchase your products.
The Trademark Manual of Examination Procedure states that:
When a mark appears in the computer browser area as part of the URL, Internet address, or domain name of the website that houses the web page, consumers generally do not recognize this as trademark use. Instead, this use merely identifies the Internet location of the website where business is conducted and goods or services are offered. See, e.g., In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008) (concluding that the mark IRESTMYCASE, which appeared as part of a website address, www.irestmycase.com, on applicant’s specimens, merely served as a contact address to reach the applicant and failed to function as a service mark for applicant’s services); In re Supply Guys, Inc., 86 USPQ2d 1488, 1493 (TTAB 2008) ( “[A]pplicant’s use of the term LEADING EDGE TONERS as part of the internet address, www.leadingedgetoners.com, . . . identifies the website where applicant conducts its retail sales services. Obviously, a website can be used for multiple purposes and the simple fact that a term is used as part of the internet address does not mean that it is a trademark for the goods sold on the website.”); In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998) (finding that the mark WWW.EILBERG.COM, when displayed in relatively small and subdued typeface below other contact information on applicant’s letterhead, merely indicated the Internet location of applicant’s website rather than functioning as a service mark for applicant’s legal services). Similarly, the use of the mark embedded in an e-mail address would be viewed as part of the website address where applicant may be contacted, rather than as a trademark.
Example of how actual commercial use beats domain registration for trademark rights
So why is this important? Imagine that on January 1, 2017, Jonathan registered “lightninglanterns.com,” and files a DBA as “The Lightning Lantern Company.” Jonathan also does a corporate name search with his state and registered Lightning Lanterns, LLC as a business name with the state of Virginia. He then starts planning his line of flashlights to be sold online and at camping stores. On April 1, 2015, three months later, he starts using the name Lightning Lanterns as a trademark and sells 500 lanterns to a regional outdoors store. He applies to register LIGHTNING LANTERNS for lanterns with the U.S. Trademark Office a few months later.
On March 1, 2017, Olivia begins selling LIGHTNIN’ LANTERNS, high-powered flashlights to hundreds of customers in the United States. On the same day, she also files to register the LIGHTNIN’ LANTERNS trademark with the USPTO and successfully registered the mark nine months later. Olivia has never heard of Jonathan and did not know about his plans.
In this scenario, Olivia would likely be the owner the LIGHTNIN’ LANTERNS trademark in the U.S. and, generally, will be able stop a third-party from using any confusingly similar trademark for similar products and services. She would likely be legally entitled to stop Jonathan from using the LIGHTNING LANTERN trademark for his flashlights, even though he registered his domain name, registered his LLC and filed a DBA in Virginia. None of these filings gave Jonathan any trademark rights in the phrase LIGHTNING LANTERN and Olivia “used” the trademark first in the marketplace.
There are a lot of important decisions that need to be made when starting a business and proper evaluation and federal registration of a business’s trademarks needs to be high on that list. Otherwise, a business owner may need to spent time and money, losing customer recognition and needing to start from scratch. The attorneys at Gerben Law Firm provide low flat-rate trademark packages that include a comprehensive search and expert analysis of trademarks. Contact Gerben Law Firm today for a free consultation.