Trademark Domain Name

What’s the Difference Between Trademarks and Domains?

Trademarks and domain names serve inherently different functions, though they are both valuable brand assets. While trademarks are a form of intellectual property that help consumers identify the source of particular goods and services, domain names help consumers find those products and services online.

To break this down further, let’s look at what trademarks and domain names actually are:

• Trademark: any word, phrase, symbol, or design that promotes particular goods/services for sale.
• Domain name: an address that takes you to a specific, designated location on the internet. A domain includes a TLD (top level domain) such as .com, .org, .net, .gov, or .edu. and an SLD (second level domain), which is a unique identifier like “northwestregisteredagent” in our domain. So, “northwestregisteredagent.com” is a complete domain name.

Is a domain name a trademark?

A domain name is not automatically a trademark and does not necessarily earn trademark rights. If you want your domain to have the protection a registered trademark provides—such as the ability to sue in federal court, exclusive ownership, and use of ®—the only way to get this is to register the domain as a trademark.

Can you trademark a domain name?

You can trademark a domain name as long as all the usual trademark requirements are met. To be eligible for trademark protection, a domain must be a distinct identifier of products for sale.

Should I trademark my domain?

While there cannot be duplicate domain names online, registering yours as a trademark adds a layer of protection against infringement. Why? In part, because similar domains will have a harder time existing if yours has trademark protection. If you want this added protection, you might consider trademarking your domain.

E-commerce businesses may be especially interested in trademarking their domains. Since customers primarily make purchases by first visiting the domain of an e-commerce site, they easily associate the domain with the business. This association can help make a domain eligible for trademark registration.

Can someone else trademark my domain name?

It is only possible for someone else to trademark your domain name if they are using a version of it to sell goods or services and if you don’t own any confusingly similar trademarks.

Let’s say you write a blog at the domain “rutabagaodyssey.com.” If a company called Rutabaga Odyssey.com pops up, they may be able to trademark the name, since your domain doesn’t inherently have trademark rights. Of course, Rutabaga Odyssey.com would be putting themselves at a marketing disadvantage—their customers would find you at the domain, not them.

Do I need the domain if I own a similar trademark?

Having a trademark does not automatically give you the rights to a related domain name. For example, owning the trademark “Hey Hi Hello” would not, by default, grant you rights to the domain “heyhihello.com.”

With this in mind, it can be wise to register domains that correspond with your trademarks. This is especially true if your trademark is your business name, the name of your goods/services, or a slogan you want people to readily associate with your brand.

Not sure if you’re going to build a website to accompany the domain? It can still be beneficial to have the domain name secured. Doing so often costs less than $30 a year.

Interested in trademarking your domain? Learn more about Northwest’s Trademark Service.

How to Trademark a Domain Name

The federal trademark registration process is the same for domains as it is for other words and phrases. You’ll answer the same questions and your trademark application will be held to the same high standards as those of its non-domain counterparts.

Most importantly, trademarking a domain means ensuring all the usual trademark conditions are met, such as establishing use in commerce by selling something and avoiding likelihood of confusion.

But not every domain is able to earn trademark rights. Below are some questions to ask yourself when figuring out if your domain is eligible for trademark registration.

Does the website found at your domain sell something?

Trademarks are connected to goods/services that are for sale. If you have a domain but don’t sell anything under it, you won’t be able to trademark it.

Is your domain a “source identifier” for your products/services?

Trademarks help consumers tell brands apart by identifying where specific goods/services are coming from. Does your domain serve this function?

For example, online retailer Amazon® also owns the trademark amazon.com®. This trademark is possible, in part, because consumers readily associate amazon.com as the platform used to buy Amazon’s goods and services.

Are there any trademarks already in existence that are similar to your domain?

If you choose a domain name that is confusingly similar to a trademark that’s already alive out there, you could run into trouble. It’s possible the mark owner would take legal action to try and revoke your ability to use the domain.

How distinct is your domain name?

In trademark land, distinctness most often comes from how creative and unique a mark is. (Another way to think about this is trademark strength.) Marks that simply describe an element of what’s being sold, or literally name it, are not inherently distinct. If you want to trademark your domain, this distinctness principle applies.

But as discovered through one of the most famous trademark/domain cases, the TLD (the .com portion of a domain, for example), can help foster distinctness.

USPTO vs. Booking.com
After the United States Patent and Trademark Office denied trademark registration for Booking.com, the company sued in a case that ultimately made its way to the U.S. Supreme Court.

In a 2020 decision, the Court affirmed that a seemingly generic name like “Booking.com” for a travel reservation company can be distinct and able to be registered.

Why does this matter?
The Booking.com case hinged on what consumers think of when they hear “Booking.com.” It was found that consumers think of this exact company, not just the general service of travel reservation booking. If consumers hadn’t easily connected the name with the company in question, the domain-turned-trademark would not have acquired distinction.

The “.com” in this case is also important. Had the same company tried to register “Booking” on its own, the courts would have likely considered the mark to be generic.

What If the Domain I Want Is Taken?

If the domain name you want is taken, you have several options: use a different domain, contact the owner and try to work something out, or take legal action. The best path will depend on your exact situation.

Alter your desired domain

How important is it that you own the exact domain that’s taken? If you can live with another domain, the simplest route may be to choose something else. The option of changing the domain by a letter or two might be available, or you may be able to select a different TLD, but this could lead to customer confusion or even trademark infringement. Consider whether there are alterations you could make that would lead customers your way while keeping you clear of potential legal challenges.

Contact the owner and try to buy the domain

While many domain owners are pretty attached to their domains, some may be willing to part with them—maybe their business is out of commission or they never ended up building a website for the domain. Even owners of active websites may be willing to part with their domain…for a price.

To contact the site owner, try reaching out at the contact information listed on the website. You can also utilize a WHOIS search tool, which will (at the very least) provide you with the domain registrar’s information—the registrar may be able to put you in touch with the domain owner. In some cases, contact information for the domain owner may appear through WHOIS, as well.

Submit a UDRP complaint

The UDRP (Uniform Domain Resolution Policy) exists to help protect against cybersquatting—the “bad faith” holding of a domain. For example, it’s often considered bad faith if someone holds a domain they don’t need with the intention to sell it. If a domain dispute is not a case of cybersquatting, it is not covered by the UDRP.

While UDRP proceedings are legal actions, they typically move faster than litigation. Through the UDRP (which is governed by ICANN, the Internet Corporation for Assigned Names and Numbers) you can be awarded the rights to a domain and have it transferred to you, but cannot be awarded monetary damages.

File a trademark infringement lawsuit

If you believe a domain name is infringing on your trademark rights, you can file a lawsuit to try and win the domain and monetary damages. The basic trademark infringement rules will apply. For infringement to be found, at the very least, your trademark must be older than the domain, the goods/services you sell must be related, and the marks themselves must be confusingly similar.

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*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.