Brand Names, Domain Names, and Trademarks, Oh My!

There is a lot of overlap between brand names, domain names, and trademarks, but they are rarely identical. And unfortunately, the nuanced differences between them sometimes get people into hot water.

The most common erroneous assumption is this: if I own the .com domain, I’ll have the right to the trademark as well, because who would trademark the name but not acquire the domain to go with it, right?  Wrong! Just because you can purchase the domain name or already own the domain name doesn’t mean that you have the right to trademark it as well.  To make sure you aren’t stepping on someone else’s toes, be sure to get the advice of a trademark attorney.

What complicates this situation is that, if you see that a trademark isn’t registered with the USPTO and the .com domain isn’t being used, you still might not have the rights to trademark the name.  From the USPTO:

Federal registration is not required to establish rights in a trademark.  Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.”   

This means that someone using the name without having registered it with the USPTO still has full rights to the name. The best way to figure out if someone is using the name and it might be protected under common law rights is to google it, extensively!

Another pitfall is the assumption that your domain name has to match your trademark exactly. The best case scenario is that your brand name, which is also your trademark, is exactly what is between www. and .com for your website.  In that case, the heart of your URL and your trademark are essentially the same thing.  But sometimes you may not be able to acquire the exact domain name you want.  If that’s the case, you can still use the brand name (assuming it’s available legally), with a modified domain name. For example, Dropbox started out with the domain www.GetDropBox.com. But, including a modifier like “go” or “get,” or a descriptive word (like “partners” for an investment firm) in your domain name shouldn’t change your trademark!

Lastly, some companies include the “.com” from their domain name in their brand name and trademark as well. For example, Overstock.com is referred to as just that—“Overstock.com”—and not simply Overstock. They chose to include the .com in the brand name because it communicates to consumers that the company only operates on the internet.  And, it also likely made the name easier to trademark, as overstock is a common, English word and without modification would be very hard to trademark (the same goes for Match.com as well).  However, just like any domain modifiers you might use, don’t trademark the .com unless you intend for that to be part of your brand name.

 

 

 

 

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