*The information below is not legal advice.
Have you noticed domain names getting snatched up left and right?! If you have, and you’re worried about protecting your domain name, we’ll show you below how to keep your website, brand, and business legally protected.
Can you trademark your domain name?
Many business owners want to know whether you can protect a domain name by trademarking it. The short answer is yes! But there are a few things to consider. First, a domain name, by itself, is only an internet address and cannot be a trademark if it is only being used as an address to a webpage. So, in order to trademark a domain name, it must function as a trademark.
A trademark is any word, phrase, symbol, or design that identifies your business’s goods or services. There are, of course, many ways your current and potential customers might identify and recognize your business. If you can show that customers recognize your business, brand, services, and/or products by your domain name, then you can convince the USPTO (the agency you register your trademark with) that your domain name should be protected under a trademark.
How can customers recognize your business through a domain name?
One effective way to show that customers recognize your business by your domain name is by matching your business name to your domain name. The reservation company Booking.com and the glasses company GlassesUSA.com do this! However, matching your domain address to your business name isn’t the only way to protect your domain name.
What if your business name does not include .com?
If you don’t want to include .com or an identifier like .org in your business name, you can still register the whole domain name as a trademark. As long as the domain name is connected in some way to your business, you should be good to go! If you take this route, we also highly recommend registering your business name too. This way, other persons cannot use your business name by itself. A trademark attorney like Andrea Sager can help you through the process of registering your business and domain name as a trademark.
What if someone else has a domain that uses your business name?
If someone else is using your business name in their domain address, they may be infringing on your rights. Here’s how to tell if it’s actually infringement. First, you and the other business must be providing the same or similar goods or services. And second, you need to have been using your business name longer than the other business.
Let’s say you began using the business name One Shop Nails in 2022 to sell supplies for nail salons and another business began using the domain name oneshopnails.com to sell nail polish starting in 2023. In this case, it’s likely that the other business is infringing on your rights. But if the other business is only selling nails of the metal kind used for construction or they started selling nail polish long before you in 2015, then they can likely continue using that domain address legally.
When a business or person infringes on the rights to your business name, you can request that they change the domain address or even have it removed. There are two ways to do this. One way is by having you or an attorney send a cease and desist letter to the offending business or person. Fingers crossed, they will change or remove their domain name. However, the following method is usually more successful. You’ll need to first register your business name as a trademark with the USPTO. Then, you can submit a DMCA complaint stating that the other domain is infringing on your trademark rights. After submitting this complaint, the host or server should take the site down. It usually works like a charm!
If you need more information on how to protect your trademark and brand identity in this digital age, contact an attorney like Andrea Sager for a consultation.
