How to Trademark a Website

Share This Post

Share on facebook
Share on linkedin
Share on twitter
Share on email

Hodgson & Finkelstein explain how to trademark a website

Download the PDF Transcript & Receive Updates

Transcription:

Cheryl Hodgson: Bill, you mentioned the word active website versus a passive website. As a practical matter, I run into that a lot. It is getting better as the Internet seems to develop and people are more aware. Particularly the first ten years of the internet, it was a constant challenge because many people don’t have – there are many businesses now who do not have a physical location at all. They’re strictly an Internet business. They sell only by Internet. The question becomes what constitutes the actual proper use that qualifies for a federal trademark when you’re just on the Internet? It goes to this issue of an active versus passive website.

Bill Finkelstein: Sure. There are a lot of people who just sell through an intermediary like eBay or Amazon and have even less of a business so to speak. They let Amazon do all the selling of fulfillment and all the rest but that should qualify as use as well. The mark is being used to identify the goods and people are buying the goods because they identify them by that name, and the goods come with a label on them with that name.

It certainly should quality as use even if you don’t have any physical – you could just be sitting in your living room in your pajamas and have a manufacturer subcontractor who makes it for you, then he delivers it to a fulfillment house, and Amazon does all the work for you, and you get a check. You’re in business under that trademark. That product bears the trademark.

Things have absolutely changed. The days of belching smokestacks as being the only way to make products is obviously long gone.

Cheryl: Just to follow up a little bit on that active versus passive because where I see it comes up, a great example is services. If I’m a lawyer, I don’t actually render services on the Internet. I may have a law firm website. I’m sure your firm does as well. Professionals do these days but that is a classic example of what I call a passive website.

It’s really like advertising for your business. You’re not actually rendering the services at the site. That’s an example of a passive website whereas I think when we’re using the term active, it’s that you can actually transact a transaction, buy something, and there are examples of services where I think you’re probably on the internet as well, of some sort.

Bill: Service marks are easier in some respects to protect and register because Google is running a service, running a browsing service. They may not be charging for it but they certainly have a trademark for browsing services. They get their money in different ways. It’s certainly a service.

A lot of services certainly take place over the internet. Your offering of the services will qualify to support your registration.

Cheryl: Exactly. When I said the advertising, I meant it’s advertising but for purposes, if you wanted to get a trademark, let’s say for example the inactive website where someone may have a picture of their product. Say it’s a hard good. There’s a picture of the product on the website.

They describe it in great detail but you can’t purchase it on the internet. One of the more popular ways to register a trademark on the internet is for an online store, an online retail store. In order to qualify for the online retail store, you actually have to have that shopping cart element or a toll-free number where you can prove the connection between the picture of the goods and the ability to access or actually consummate a transaction.

To trademark a domain, it must be used as a trademark to market goods and services, and the domain is not completely descriptive or generic.  We hope this helps you learn how to create trademark rights in your website.

Visit our HOME page for more tips!

International Trademark Registration

Brand Going Global?

Thinking of registering a global trademark for your business? Get your free step-by-step guide to brand protection in international markets, prepared by a leading international trademark attorney today.




Privacy Policy: We hate spam and promise to keep your email address safe.

Nine Costly Myths About Trademark Registration

CLICK BELOW TO LEARN THE OTHER SIX



Privacy Policy: We hate spam and promise to keep your email address safe.

Where should we send the guide?


Privacy Policy: We hate spam and promise to keep your email address safe.

Follow the Rules of Trademark Use in Marketing and Media to Maintain Trademark Rights

Cheryl’s Brand Owners’ Guide to Trademark Use reveals how to establish lawful trademark use necessary to register a trademark and to sustain trademark protection.



Privacy Policy: We hate spam and promise to keep your email address safe.

Can You Protect What You Select?

MAKE A SMART CHOICE

Hint—Five choices and two are really bad. Enter your email and avoid the bad guys.




Privacy Policy: We hate spam and promise to keep your email address safe.

Start Your Trademark Journey the Right Way

— GET 3 FREE CHAPTERS —

Registered Trademark - Amazon Bestseller
Thinking of registering a trademark for your business?

Avoid common mistakes when you download three chapters from my best-selling book—totally free.

Privacy Policy: We hate spam and promise to keep your email address safe.




Skip to content