Is My Domain Name a Trademark?
This is not only a common legal question but also a great question as the answer is - it depends!
A domain name simply is an address on the Internet. Computers find web addresses by a series of numbers known as an IP address. To make the process more user friendly, the numbers are matched to words that, hopefully, can be easily remembered. The best and most valuable domain names are very descriptive, and very easy to remember. Cars.com is a great domain name if you are in the business of selling cars.
A trademark identifies the particular source of goods or services and is essentially a brand name. In order to identify a particular source, a trademark must be something more than the generic name for the product or service. For example, if I refer to a "computer," I have not told you anything about the source of the product. On the other hand, if I refer to a "Dell" computer, I have identified a particular source and brand. The trademarks that receive the most legal protection are those that are not descriptive at all.
It is this function of a trademark that makes some domain names trademarks and stops others from ever being trademarks. Ebay.com is a trademark. It not only provides an address on the Internet, but it also tells us a particular source of online auction services.
Hotels.com Trademark Issues
Recently, Hotels.com has had its share of trouble with this concept. Hotels.com not only refers to a website address, it arguably identifies a particular brand. Many of us can hear the jingle in our heads -- "hotels" (pause) "dot.com" -- and many of know that there is a specific company that provides that service at that address on the Internet. Hotels.com has a substantial advertising budget that has produced that recognition. However, the courts have held that hotels.com is not a trademark! Their reasoning is that hotels is not a trademark and cannot be a trademark and the ".com" portion is only an Internet address. Surely, hotels.com cannot stop every other company in the lodging industry from using the word "hotel". Hotels.com already has the unique domain name; there can only be one website at that address. But, it cannot go so far as to keep the "hotels" designation from its competitors.
If your brand name is not generic or purely descriptive, and if you have a domain name that is your brand name, then, yes, your domain name is a trademark. A good example of this would be ebay.com. On the other hand, if you are fortunate enough to have a generic domain name, such as cars.com, you must be content with the benefits of being easily found on the Internet and easily remembered. It is unlikely that you will be able to claim trademark protection in your domain name.
If you would like to register your trademark with the United States Patent & Trademark Office, which provides you with nationwide exclusive rights to the name, contact us at Jaburg Wilk to learn about our reasonable flat rate trademark registration services.
About the author: Maria Speth is lawyer at the Phoenix based law firm of Jaburg Wilk and she is the Intellectual Property Law Department Chair. She is a frequent speaker on intellectual property law, internet law, trademark and tradename law and is the author of the book, Protect Your Writings: A Legal Guide for Authors.