If I have a domain, do I have the trademark? Domains vs. Trademarks
/So many times people come through my door for trademark applications saying, “It’s probably fine, I got the domain name.” Or they think they are “safe” from trademark infringement claims because the domain was available.
But guess what?
The domain name means almost nothing to me. Nada.
That’s because a domain name and a trademark have very little to do with one another.
Are they second cousins? Sure!
But in reality, people don’t really realize just how far apart they are. And many— MANY— folks are shocked when I tell them that just because you have— or don’t have— a domain doesn’t typically mean squat when it comes to trademarks.
Let’s break this down to bite-sized pieces.
1. Do I file a domain name application with the US Patent and Trademark office?
No.
You file an application to register a domain name with a registrar accredited by the Internet Corporation for Assigned Names and Numbers (ICANN). A worldwide directory of ICANN-accredited domain name registrars and registrar contact information are available on the ICANN website.
You file trademark applications with the USPTO (for Americans; other countries have different agencies) and / or specific states.
These organizations do not work with one another in an official capacity.
2. If I have a trademark, do I have a domain name?
No.
I REPEAT: NO, YOU DO NOT.
A trademark is not the same thing as a domain name. A trademark identifies goods or services from a particular source or of a defined quality. To use a trademark as your domain name, you must purchase the domain name registration from an ICANN-accredited registrar (GoDaddy, Namecheap, etc.)
In certain instances, a trademark owner may benefit from ownership of its mark when it comes to domain name registration and/ or domain name disputes.
For example, when a new top-level domain (TLD) or country code top-level domain (ccTLD) launches, there is a period of time which acts as a “right of first refusal” for your trademark’s domain. This time period allows trademark owners to apply for domain names that correspond with their registered trademarks before domain name registration opens up to the general public (called a “sunrise period”). However, this is not an automatic process.
3. If I have a domain name, do I have a trademark?
Not necessarily.
Remember: A domain name in and of itself is not the same thing as a trademark. It’s more like…. a map. Use of a domain name merely as an informational part of the domain name holder’s Internet address does not qualify as trademark use.
Examples of a domain name used only as an Internet address and not as a trademark:
A domain name that displays only in the Internet address bar (e.g. simply “www.mysite.com” with no other branding)
A domain name that merely redirects website traffic to another website
A domain name that is used in close proximity to language referring to the domain name as an address
A domain name that is displayed merely as part of the contact information for the domain name owner
To qualify as a trademark or service mark, the domain name must function as a mark; that is, it must serve as an indicator of source and not merely as an informational part of an Internet address. If the domain name functions separately as an indicator of source, it may be registered with the appropriate trademark office as a trademark or service mark. For example, a domain name that is displayed prominently and frequently on a webpage might function as a trademark.
A key factor in determining whether the use of a domain name rises to the level of trademark use is whether consumers view the domain name as a symbol of origin separate and apart from anything else.
4. Does a domain name expire?
Yes. The expiration date will depend on the contractually agreed-upon term of registration between the domain name registrant and the registrar. A domain name registrant can renew the registration if it so desires.
5. Does a trademark expire?
Yes, if a trademark is not renewed before the due date, the registration expires.
