Domains names are not trademarks. Clients and marketing professionals are often confused as to the difference between registration of a domain name and registering a trademark or service mark. A domain is nothing more than an Internet address, much like the street address where you live. Domain names do not afford protection against use of the domain name for competitive products or services unless separate trademark rights are established and registered.
Much of the misunderstanding arises from advice given by Internet marketing experts proclaiming that descriptive search terms are that are needed since they afford instant search engine ranking. While a descriptive domain may garner high ranking in search results, they stink as trademarks!
Trademarks must be distinctive, and can not describe the goods or services. Since many domain names, describe the goods or services, they cannot function as a trademark or service mark in and of themselves. A trademark is a word, symbol, slogan, even a sound that is used to identify and distinguish your goods and services from those of your competitors. Rights in a trademark are secured and ultimately maintained only by continuous use in commerce of the mark for specific goods and services.
Without continuous use of a term to sell goods or services, no trademark rights are established.
Domain Names Can Infringe a Trademark
There have been legal decisions holding that a domain name which is the same or similar to an existing trademark can infringe a trademark through the creation of “initial interest confusion.” This occurs where a domain includes a trademark in its domain for similar goods or services, or a trademark is used by a competitor in its metatags to cause their site to pop up when the mark is typed into a search engine. However, descriptive domains that describe what is being offered for sale at the site are examples that domain names are not trademarks. A good example is hotels.com. Hotels.com sells hotel rooms. Great for SEO but not for building a brand. Domain names are not trademarks. Hotels.com can dress up the word hotel in a pretty logo, but the word cannot function as a trademark for hotels!
Without a federal registration your chances of filing a complaint and being taken seriously are greatly diminished. Companies often invest huge amounts of money creating and promoting their websites but don’t adequately protect their domain names, believing that simply securing a domain name registration is sufficient.
When you’ve registered your domain name, as long as you renew it properly, others cannot use it as their web address. However, that doesn’t mean you can register it as a service mark that’s protected by the federal government.
If your domain is descriptive of what sold at the site, chosen for search engine ranking, it will not be protectible as a trademark.
However, if you use your site to provide services online, the Trademark Office will likely grant registration. An informational site is one that tells people about you and what you do or sell but doesn’t actually deliver services or products online. That said, a domain such as Expedia can be – and is – registered and protected because the owner provides services through the website, and most important, because it is distinctive, not descriptive.
Other examples of registrable types of websites include online banking, retail, real estate marketing services with virtual tours and chat rooms. In short, if you are marketing goods or services on the Internet, and your domain is more than a general descriptive term, you should consider a federal registration to act as a shield and sword, and protect the most valuable asset of your business, its good will.