Avoid Trademark Infringement When You Choose a Domain Name

In theory, choosing a domain name is simple. If it's easy to remember, pronounce, and spell, and suggests the nature of the commerce on your website, you've got yourself a winner. But even if your choice is brilliant from a marketing standpoint, it might not be so smart from a legal perspective.

If you choose a domain name that conflicts with any one of the millions of commercial names that already exist, you risk losing it. And if you've put money and sweat into marketing your website and then are forced to give the domain name up, your online business is likely to suffer a damaging, if not fatal, blow.

Fortunately, you can take steps to avoid losing your domain name before investing too much time and money.

What Is a Trademark?

A "trademark" is a name, phrase, or design (or some combination of any of these three) that identifies the source or provider of goods or services. Trademarks can be broken down into two categories:

• trademarks, which apply to marks that are connected to goods, and
• service marks, which apply to marks that are connected to services.

Typically, "trademarks" refers to marks that are connected to both goods and services. But people often use "trademarks" to refer to "service marks," though there is a legal distinction.

The most common forms of trademarks are company names, brand names, logos, and slogans. But domain names can also be trademarks (or service marks).

Some popular domain names that are registered as trademarks include:

• amazon.com
• payless.com
• MLB.com, and
• eHarmony.com.

However, companies often trademark the second-level domain of their domain name and forego trademarking the domain name as a whole. The second-level domain of a domain name is the text that appears before the top-level domain. For example, with the domain name "bluebell.com," the ".com" is the top-level domain and the "bluebell" is the second-level domain.

For instance, suppose you own a clothing boutique called "Cool Lemon" and you also own the domain "coollemon.com." You might apply for a federal trademark for "Cool Lemon" but decide not to register the trademark "coollemon.com" because you've already registered most of the domain—that is, you've already registered "Cool Lemon."

You'll usually want to register your domain name as a trademark if your domain name is an important part of your brand's identity. For example, if you want to highlight the fact that you're an online store or network, you might want to emphasize that ".com" or ".net" is part of your branding or company image.

What Trademarks Can Be Protected?

As the header above would imply, not all trademarks can be protected. Some trademarks can be legally protected while others can't. In general, to be legally protected, a trademark:

• must be distinctive, and
• can't be the same or confusingly similar to another trademark (in other words, infringe on another trademark as discussed later).

Trademark law has other requirements for trademarks. However, the two criteria listed above are the most essential elements of a trademark.

Trademarks exist on a scale of distinctiveness. The more distinctive a mark, the more protections it has. Trademarks are divided into five classifications:

1. Fanciful: These marks are made up. "KODAK" for cameras is perhaps one of the most famous fanciful marks.
2. Arbitrary: These marks are real words that have no relation to their associated goods or services. "APPLE" for computers is considered arbitrary because while apple is a real word, it has nothing to do with computers.
3. Suggestive: These marks suggest some quality of the mark's associated goods or services. These marks aren't descriptive of the goods or services but instead require a level of thought to make the connection between the mark and the goods or services. "COPPERTONE" is a suggestive mark because it implies that your skin will have a copper tone or glow when you use the sun lotion product.
4. Descriptive: These marks simply describe some quality of the associated goods or services. The word "CREAMY" for yogurt would be descriptive because it directly describes the texture and taste of yogurt.
5. Generic: These marks aren't technically considered trademarks. They're the everyday name for common goods or services. For instance "COFFEE.COM" or "DRUGS.COM" would be generic.

If your trademark is fanciful, arbitrary, or suggestive, then it can be protected as a trademark. Fanciful marks have the highest level of protection followed by arbitrary and then suggestive marks, respectively. Generic marks can't be protected as trademarks.

Ordinarily, descriptive marks can't be protected. However, descriptive marks can acquire distinctiveness or secondary meaning. When these marks acquire distinctiveness, then they can be protected as trademarks. Descriptive marks can achieve distinction through sales and advertising, continuous long-term use, or some other ways.

If a descriptive mark doesn't acquire distinctiveness, it can still be registered as a trademark on the USPTO's Supplemental Register. The Supplemental Register is reserved for descriptive marks that aren't distinctive enough to qualify for the USPTO's Principal Register. The Supplemental Register offers trademarks some protections.

What Is Trademark Infringement?

Now that you know what a trademark is and which trademarks can be protected, you need to know when a trademark infringes on another trademark owner's rights.

"Trademark infringement" is when you use someone else's mark or a mark that's similar to someone else's mark without permission in a way that would likely cause confusion, deception, or mistake among consumers about the source of the goods or services.

Applying these principles to your domain name selection, you're at risk of losing your chosen domain name if the owner of an existing trademark convinces a judge or arbitrator that your use of the domain name makes it likely that customers would be confused as to the source or quality of the products.

Sometimes similar domain names can cause customers to buy different goods or services than what they intended to buy. For instance, suppose, on the recommendation of a friend, you decide to purchase Lee's famous Flamebrain barbecue sauce, which is sold only on the Web. You intend to type "flamebrain.com" into your browser but accidentally enter "flamerbrain.com" instead. You get a website run by Henry, who has both copied Lee's idea to offer a barbecue sauce for sale on the Web and, with a very minor variation, the name of Lee's sauce. You order two bottles, completely unaware that you ordered the wrong product from the wrong website. You get a barbecue sauce that is much inferior to Lee's famous sauce.

Avoiding Trademark Infringement With Your Domain

The best way to choose a domain name that satisfies your own marketing needs and doesn't get in the way of anybody else's trademark rights is to conduct a trademark search. You can do the search yourself or outsource the search to a trademark attorney or online search service.

When you conduct your search, your search should include your domain name in full and your second-level domain name. So if your domain name is "bluebicycle.com" then you should search for "Blue Bicycle" and "bluebicycle.com."

You won't only be looking at other domains. Your search should also include:

• federally registered trademarks
• state registered trademarks
• trademarks that have been applied for with the U.S. Patent and Trademark Office
• company names
• brand names
• social media accounts, and
• online marketplaces.

You'll need to look for names that not only match your domain name but names that closely resemble your name. Pay attention to names that are similar to your domain in appearance, sound, and connotation. Also, look out for translations of your name.

For example, using our previous example, suppose your domain name is "bluebicycle.com." You might pay special attention to the domains "bluebike.com," "bicecletaazul.com," and "bicycleblu.com." These domains don't exactly match your domain but they're similar enough to consider because consumers could confuse your domain name with any of these.

Again, don't just limit your search to domain names. If you see a company called "Blue Bicycle" (or something similar), then you'll need to take that into account.

If your search turns up any names that are the same or similar to your proposed domain name, ask these questions:

• Will your website offer goods or services that compete with the goods or services being sold under the similar domain name?
• Will your website offer goods or services that typically are distributed in the same channels as the goods or services being sold under the similar domain name? Your goods could be distributed in the same channels if, for instance, you plan to offer sports equipment on your website, and the owner of the possibly conflicting name sells sports clothing.
• Could your website divert business away from the site with the similar name?
• Is your domain name so similar to the other domain name that users might end up on your website by mistake?
• Is the other name well-known? If it is, then it's harder to use a similar trademark even for unrelated goods or services.

If the answers to all these questions are no, you can feel reasonably free to go ahead and use your domain name without fear of creating a legal conflict. If you answer yes to any of them, you'll bear some risk of a legal challenge down the road.

If you aren't sure, take an informal poll of friends. Would they be confused by the simultaneous use of the two names? Might they end up on the wrong website? Another option is to run the possible conflicts by a trademark attorney. Although you can anticipate that the attorney will be more conservative than is actually necessary, you still could benefit from having a trained eye go over your circumstances.

When Your Domain Name Is Already Taken

If the domain name you want is already taken, you have a few options. The best option will depend on your individual circumstances, In general, if your desired domain name is being used by someone else, you can either:

• change the domain suffix (e.g. .net, .com, etc.) of your domain name, though this option doesn't generally eliminate your risk of trademark infringement
• alter your domain name enough to avoid consumer confusion
• buy the domain name from the owner, or
• challenge the domain name owner if you believe you have rights that supersede theirs.

But how do you know if your rights in a trademark (domain name) supersedes someone else's? If you haven't started using the domain name or the second-level domain (or a mark that's similar to the domain name names), then you don't have any rights to the domain name. Trademark rights exist only as long as you use the trademark.

But if you have used the second-level domain or a name that's similar to the domain name in question, you might have a case. The United States goes by the first-to-use system. In the U.S., the first to use a trademark has the rights to the trademark. The first to use the mark has trademark priority above later users of the mark. All other later users will probably have to stop using the mark and might even have to pay the trademark owner damages for infringing on the first user's trademark rights.

For example, suppose you run a social media marketing business under the name "Launch Media." You've been operating your business by word of mouth for a couple of years but decide to create a website. You want to use the domain name "launchmedia.com" but find that another company is already using the domain name. After some research, you discover that the company only started using the domain a few months ago and didn't exist as a company prior to that. In this case, you'd likely have a good case to argue that you have priority rights in the domain name.

If someone else is using a domain name that you believe you have rights to, then you can take steps to stop the alleged infringer. You can start by sending the infringer a cease-and-desist letter asking them to turn over the domain name.

You can contact the domain owner regarding your trademark rights to see if you can come to a deal for them to relinquish the domain name. You can send the letter yourself or recruit a trademark attorney to draft and send the letter for you. If these efforts don't work, you might need to file a trademark infringement lawsuit.