Repeat After Me—Domains are NOT Trademarks (but Trademarks Can Be Domains)

trademark-attorney-in-phoenix

Lately, I’ve had more than one new business owner client tell me they registered a website domain with their company name and, because they were able to do this, then it must not be a registered trademark and available, right?

[I direct your attention to the title of this blog post]

No, you cannot just add a word onto someone else’s trademark and register that domain

A recent situation with a new startup client ran something like this: the founder had selected their company name but had not ever bothered to perform an actual trademark search or “clear” the usage of the name. She subsequently hired my firm to assist with getting their startup formally set up and basic initial documentation and disclosures prepared.

At one point, the founder requested that I e-mail them at her newly set up e-mail account, the TLD of which read like their business name but with a short word tacked on to the front of the domain. In other words, let’s say the company’s name was “coolbusinessname” (which would not be a good trademark btw). What she had done was add “go” to “coolbusinessname”. [Actual names changed to protect the innocent—not to mention my license to practice law].

Seeing the client’s new domain name immediately threw up threw up red flags (followed promptly by a four-letter word, I remember).

I replied by asking her if there was a reason why they had not simply purchased “coolbusinessname.com” or similar gTLD? To which she answered back that the domain was already registered to someone else. That owner was willing to part with it for a mere $15,000. The client went on to explain that, as a small startup, they didn’t wish to pay this amount for the domain, so they opted instead to simply add a word onto the front of their chosen name and register that as their domain.

After another four-letter word or two out of my mouth, I did a basic search for the client’s business name on U.S. Patent and Trademark Office’s Trademark Electronic Search System (or “TESS”) database. The good news was that it did not appear that anyone had as yet registered (or applied for registration of) a trademark identical to my client’s business name.

Why you need to do a trademark clearance of your proposed business name

The bad news? A company out of Florida had actually trademarked a name (a slogan, to be precise) that, while not exact, was nonetheless pretty darn close to my client’s business name. Worse yet, the International Class of goods (or, in this case, services) in which the confusingly similar name had been registered was the exact same line of e-commerce business that my client was planning to be involved in.

Thus, as the owner of an identical (or confusingly similar) registered trademark, the Florida company essentially had a (legal) monopoly on the use of that mark within that category of services. Federal registration gave them a presumptive claim of exclusive ownership of that mark if they ever wanted to sue my client for the right to use of the name in that service category.

In such a case, the client would be between a rock and a hard place—either spend tens if not hundreds of thousands of dollars (they really didn’t have) to fight an uphill battle over the right to use the name in a Federal district court, or incur considerable expense to change their name and re-market their business to the consuming public.

As I wrote awhile back, this is which is why “clearing” your brand name or trademark as early as possible in the life of your business is so important.

Don’t be that “guy” (or gal) that assumes you “own” your business name

There are at least two morals to the story which I hope both new and aspiring startup and/or business owners will take from this:

First, a domain name is not a trademark, even though trademarks can end up as domain names. To put it another way, just because a domain name happens to be available or, in the case of my client, you can tack a word onto it and register the domain, doesn’t mean it isn’t already trademarked by someone else, and it certainly doesn’t immunize your business from possible Lanham Act claims by someone who has already Federally registered the name before you did.

Similarly, never ever assume that just because you can register a domain name that includes some or all of your business name that it is automatically fair game and “available”.

For one thing, the registration of trademarks at the Federal level is the province of the USPTO, while registration of domain names is handled by (mainly) private, ICANN-accredited registrar companies. Moreover, it’s not the job of (and you shouldn’t expect) domain registrars to look into potential conflicts between the domain you’re seeking to register and another brand or trademark that might be out there in the universe.

Basically, if you pay the domain registrar their registration fee, they register your selected name. End of story. Just don’t expect them to run to the rescue or cover your legal fees when you receive a “C&D” letter (or, worse yet, get served with a lawsuit seeking an injunction against your business for using a name that is identical or confusingly similar to one that’s already been registered).

Finally, you should also never assume that your selected name is so special or clever or unusual that you can just go ahead and use it. With all due respect, you’d be surprised how un-original you really are. There’s a reason after all that Fortune 500 companies spend tens and hundreds of thousands of dollars on branding consultants and market focus groups to come up with strong, distinct, registrable names for their company’s goods and services.

Conclusion

At a minimum, always do a search of the TESS database. It’s free and, assuming you pay Federal income taxes, you already paid for it. Even better, consult with or hire an experienced trademark attorney to conduct an actual search and pre-clearance of your business or brand name. Yes, it will take a bit of time, and certainly cost you some money, but I can almost guarantee it will be far less expensive than having to completely re-name and re-market your business or the particular good or service—or defending a trademark infringement lawsuit—later.

Image “Trademark” by Nick Youngson CC BY-SA 3.0 Alpha Stock Images


Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a startup, technology, and e-commerce law practice advising founders and management teams on company startup, corporate and technology transactions, e-commerce, as well as Internet privacy concerns. The firm serves corporate and individual clients throughout Arizona, the United States, and internationally. Our offices are conveniently located along the Camelback corridor in Phoenix’s financial district. For more information about our Trademark Law practice, feel free to reach out using the contact form on the right or call us at (602) 222-5542 to schedule a meeting. Connect with Ben on LinkedIn or Avvo.