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Should You Trademark
Your Domain Name?

A domain name is not, or not necessarily, a trademark. But one can't help a company choose a domain name, or trademark, without knowing a bit about both and how they relate.

Trademarks (and service marks) are words, phrases, images - in fact, anything, including sounds, colors and smells - that can identify a product or service and distinguish it from the products and services of others. (Technically, "trademarks" identify goods, "service marks" identify services, and "trade names" identify business entities.)

Companies acquire trademark rights by using a mark or name commercially as a goods/service identifier, though there are substantial benefits to registering the mark with the U.S. Patent & Trademark Office. (Technically, only trademarks and service marks can be registered; mere trade names cannot.)

The trademark owner's basic right is to prevent others from using confusingly similar marks, in other words, marks that are so similar to the owner's mark, and used with respect to such related goods/services, and perhaps used in such contexts (such as similar customers, marketing means and distribution channels) that consumers will be confused into believing the sources of these goods/services are related.

A domain name is inherently an address in cyberspace. However, it can become a trademark or service mark if used to identify one's products or services. In most cases - and surely when intending to develop good will and trademark significance for the domain name - companies should choose, use and clear their domain names as they would their marks (generally with the assistance of trademark counsel). That is, they should --

• confirm that the mark or name can be used as intended without infringing anyone else's rights;
• choose a mark that can distinguish their goods/services (bookstore.com for an online book seller would be hard to protect as a mark; Amazon.com is relatively easy); and
• use the name in accordance with proper trademark practice, including as proper adjectives, with appropriate notices (such as TM superscripts until registered), and often in conjunction with the term for the type of product or service involved (such as The eBay "person-to-person online trading community").

-Howard Zaharoff, Esq.

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Howard Zaharoff, Esq.,Morse, Barnes-Brown & Pendleton, P.C. 1601 Trapelo Road Reservoir Place Waltham, MA 02451 (781) 622-5930 x237 (781) 622-5933 fax http://www.mbbp.com email: hgz@mbbp.com

Besides practicing intellectual property law at Morse, Barnes-Brown & Pendleton, P.C., Zaharoff is a former co-chair of the Boston Bar Association Computer and Internet Law Committee and current co-chair of its Intellectual Property Section.