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

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

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.