You’re the owner of a trademark if you’re the first to use it. That principle also applies to a domain name that functions as your trademark. Whether or not you’ve registered the name with the U.S. Patent and Trademark Office, you can stop someone else’s subsequent use of a similar mark on similar goods and service.
So why bother registering it as a trademark? For one thing, registering your trademark makes it easier for you to enforce your rights as a trademark owner because you’ll be presumed to own the mark and anyone who later uses it is presumed to know about it. This makes it a bit easier to convince a judge that the later user is intentionally infringing on your mark. If you are able to prove the infringement was intentional, it can put more money in your pocket. The possibility of suing for enhanced damages will make it easier to find a lawyer to take your case if someone infringes on your trademark.
Not all domain names can be registered as trademarks. The USPTO is particular about what can be registered as a domain name. For example, you will have a problem registering a generic name like drugs.com as a trademark. And you’d face an uphill struggle to register a domain name that you use solely as an address and not a signifier of services. For example, the law firm of Smith & Jones would have a hard time registering smith&jones.com as a trademark. It would have to prove that the domain is being used for some other purpose than for people to find and contact the law firm.
It’s a breeze to file your trademark application online at the USPTO website. The typical filing fee for a domain name mark is $325 per class if you file electronically using the USPTO TEAS electronic filing system. It can cost more, however, if you’ll be offering a number of different services on you website. To complete the registration process, you have to actually be using the domain name on a Web site. But you can start the process if you intend to use name soon (an intent-to-use application). When you do start using the name and complete the registration process, the application date will be treated as the date you first used the mark. This will give you a priority claim over later users. When you file an intent-to-use application and then complete the process after you begin using the domain name, you pay an additional $150 fee.
The USPTO may take a year or more to process your application but once you file it, your domain name will appear as a pending trademark in the USPTO database. If you file a “use” application (one based on your actual use of the name), you’ll probably hear from the USPTO in three to six months. If there’s a problem, you’ll get a letter from your examiner explaining it. In many cases, you’ll be able to solve the problem with a phone call. At some point, you should receive a Notice of Publication. The USPTO will then publish your mark in its Official Gazette allowing people to oppose your registration. Assuming there is no opposition, you’ll receive a Certificate of Registration or in the case of an intent-to-use mark that has not been placed in commerce, a Notice of Allowance. While all of this sounds like a speedy process, be aware that it may take a year or more to complete. Later on, there will be some housekeeping chores to keep your registration in force. For example, between five and six years after registering your mark, you’ll need to inform the USPTO that you’re still using it. You must renew your registration every ten years and between the fifth and sixth year following registration, you must file an affidavit declaring the continued use. This is known as a Section 8 declaration.