News and Articles

Trademark and Website Domain Names

Yogi Patel - Monday, October 10, 2016

Coming to America (1988)

Cleo McDowell:

“Look... me and the McDonald's people got this little misunderstanding. See, they're McDonald's... I'm McDowell's. They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions, but their buns have sesame seeds. My buns have no seeds.”

Most businesses, at some point or the other, hope to establish a unique brand with the aim of distinguishing themselves from others within their respective industries. Businesses spend countless resources to establish a brand and once they do, they should protect it at all costs. While only a parody, the scene from Coming to America quoted above illustrates the issue well: What if you managed to come up with something that catches on in the market place and becomes entrenched in your ability to generate business. What would you do to protect it? McDonald’s would likely go after McDowell’s to prevent him from creating confusion and diluting its brand.

The point of this article is to discuss how domain names, which should be thought of as your “brand” can be protected using trademark laws. There is little doubt that most businesses view online presence as essential. A website, is generally the portal through which the business makes its presence known. Whether it is marketing with the intention of providing business owners opportunities to expand their services or whether it is actually providing the service using the website itself – website are here to stay and are poised to become increasingly more essential to businesses.

To make the website more readily identifiable to their customer-base, business owners frequently use their business name as the domain name. A common assumption is that registering a domain name is enough to safeguard the name from being used by others. Simply put, signing up with a registrar and paying a small annual fee only gives the business a license to use the domain name for a certain period of time. Additionally, this right could be revoked at any time. So most domain names are not owned by the business, they are simply on lease. Imagine spending a significant amount of time and resources into building your website and driving traffic to it, only to have to start all over again because someone owns the trademark that is your domain name.

Registering or licensing a domain name will not protect business owners from others who actually trademark the same name or a similar domain name. This could lead to customer confusion, particularly where others with a similar domain name are also selling similar products. Online businesses are especially vulnerable to infringement, because the website is its sole identity. In most cases, trademarking the domain name is an important step towards protecting a business’ online identity and will provide business owners with legal recourse in the case of infringement. Trademarking a domain name essentially declares that the business owner has legal rights to that name.

A business owner who registers a trademark has an exclusive legal right to use the mark in commerce. For example, a business owner who trademarks a domain name will have the exclusive right to use that domain name in relation to its goods and services. Trademarking a domain name is subject to the same rules and standards as trademarking a business name or logo.

While choosing a domain name may be simple, not every word is protected by trademark law. A business owner who wants to trademark a domain name will have to consider a few factors. The name must identify products or services in that business, and it must be distinctive. For example, using common words such as coffee.com or juiceshop.com are most likely ineligible for trademark protection. The more unique the name is, the more likely it will qualify as a trademark. A diligent search should be performed to avoid the potential of any future legal liability as well as to ensure that an application for trademarking the domain name is not rejected.

This article was prepared with the help of Julie Lee, J.D. candidate (2017), CUNY School of Law.

 


Recent Posts


Tags

Negotiating Arbitration Agreements Fair Chance Act Fair Workweek Law Tax-Deferred Savings Freelance Isn't Free Out-of-State LLC Owners employment discrimination lawsuits $15 Minimum Wage Interview Series Federal Overtime Law Plastic Bag Ban Housing Law COVID-19 Mandatory Class Action Waivers NYC Sexual harrassment law Start-up Ventures I-9 Verification Prenup Trade Secrets Act Sexual Harassment and Discrimination In The Workplace Worker's Rights Employment Offer/Agreement Health Care NYC Sick Leave Law Trade Secrets stocks Privacy Sexual Harassment federal Department of Labor New York Earned Sick Time Act Intellectual Property Federal Joint Employer Rule National Labor Relations Board Trademark licensing Corporate Law Credit History Business Law Fair Labor Standards Act (FLSA) Unions Apple vs. FBI Federal Small Business Assistance National Labor Relations Act NYC Human Right's Law's Business Emergency Economic Injury Grants New Address Web Domains Fair Pay and Safe Workplace Executive Order LinkedIn Internet Law NLRB Westchester Safe and Sick Time Laws Transgender protections sexual harassment training Browning-Ferris Case Interns Employee Manuals and Policies Household Employees Trademark Law Non-Qualified Stock Options Facebook Privacy and Litigation Employer Mandate Fair Work Week Legislation Credit drug testing Fair Play to Pay Act New York City Human Rights Law Glatt v. Fox Searchlight Pictures, Inc. Glatt v. Fox Searchlight Pictures Salary History Inquiries commuter benefits Nobel Prize Security Wage and Hour Law Divorce Right to Unionize Minimum wage Joint-Employer Relationship Overtime Rules Technology NY payroll law EEOC Filing Requirement Fair Labor Standards Act Criminal Record Employee Salary Histories Nanny Audit Alter-Ego Doctrine NYC Salary History Law graduate students Hairstyle Discrimination workplace discrimination Wage Theft Protection Act Credit Checks Ban the Box Domain Name Landlord-Tenant Law Executive Negotiation Families First Coronavirus Response Act Immigration Status Illegal rentals Interns as Employees Womens Rights Human Rights Law Postnup Public-Sector Union Fees NQSO Affordable Care Act Unionization Economic Injury Disaster Loans U.S. Department of Labor Lactation Law Marijuana Testing Overtime Exemptions ACA Attracting Investment Payroll Scams AirBnB Department of Labor Paid Family Leave Pregnancy Workplace Requirements Federal Acquisition Regulatory Council Real Estate Law Firm Announcements Independent Contractor Webinar Employment Contracts marijuana usage Executive Severance entrepreneur Sexual Harassment policy Paycheck Protection Program Newsletter Westchester County implementing new leave laws Selling Business #meToo Federal Contractors Employment Law

Archive

EDIT - blog-container - This controls the styles for the headings

EDIT - BlogTagCloud - Font style

description

  • EDIT  - post-body - Font style

EDIT - side-panel - This is the colour of the sidebar headings

Snap | BC Module - Blog - Blog Description

Snap | BC Module - Blog - Blog Title

EDIT - Snap | BC Module - Blog - Date - This is the date box style

EDIT - Snap | BC Module - Blog - Post Content - Font style

EDIT - Snap | BC Module - Blog - Post Title - Heading style

EDIT  - Snap | BC Module - Blog - Sidebar Content - Font style

EDIT - Snap | BC Module - Blog - Sidebar Title - Heading style

latest blog title snap text

 

Disclaimer: Nothing on this website is or should be construed as legal advice.
An attorney-client relationship does not exist with our firm unless a signed
retainer agreement is executed, and we do not offer legal advice through
this site or any of the content located on it. For legal advice for your
particular circumstances, please contact us directly.