Your domain name can be taken from you by the Trademark owner who has registered a similar name with the United States Patent & Trademark Office (USPTO). You will lose the right to your domain name and may be liable for substantial money damages. Regardless of the method, you lose the valuable asset which identifies you and your brand. The time and money spent promoting your domain name to the public is lost forever.
The Purposes of Trademark Law
A trademark is simply a protected brand name. Trademark law serves two functions. One is to identify, distinguish & protect brand names so that they may be exploited for profit by the owner. Second, it identifies the source of goods and services to protect consumers from being misled by “confusingly similar” marks. Consumers must not be confused as to the “source” of the product or service they use.
Marks that identify products are called “Trademarks”. Those that protect services are called “Servicemarks”. Despite the different legal terminology, the benefits are exactly the same. Registration of a federal trademark is public notice of your claim to your brand name. Registration allows owners to sue in federal court, it presumes ownership & can serve as the basis of recognition in o9ther countries. Plus, in a successful lawsuit, the owner may be awarded legal fees and money damages. The letter “r” with a circle around it means the mark has been duly registered with the USPTO. The “TM” does not.
A Trademark Trumps a Domain Name
Just because you spent a lot of time finding a domain name gives you no legal protection. A registered trademark preempts any domain registration. Owning the domain name provides no defense to a claim of trademark infringement. The trademark owner has recourse to courts and other means to have your name removed. It matters not how they take it, you just lost it.
How To Protect Your Domain Name
The best and only advice is to search the USPTO trademark records to see if the domain name you have registered conflicts with any registered or “pending” mark. You can do a free search yourself at USPTO.gov using the TESS search. It’s easy. You can also use a trademark search company, which charges several hundred dollars for a detailed report that can be global in scope. If you have a brand which will you will promote in other countries, hire an experienced trademark attorney and let him or her order the report and interpret it.
The procedure for registering a trademark can be done yourself online. Though it is cost effective and relatively easy, we’d advise using an expereinced trademark attorney simply because it saves time and reduces risk of error. Often the reviewer of your application has a question or objection which an experienced attorney can more easily address and remedy. The class of goods or services you need register under is also best left to an attorney.
FYI:
1. Trademarks are only available for goods and services actually being used in “interstate commerce“. Interstate commerce means across state lines. The intent to use in interstate commerce is insufficient for registration.
2. The registration with the USPTO conveys “federal” trademark protection across the United States. TIP: If you do not do business or advertise across state lines and therefore are unable to qualify for federal protection, you may still obtain state trademark registration in your state.
3. A registered trademark is only a presumption of ownership of the brand name. For example, if you have been doing home valuations as Zillow for the past 5 years, but never registered it, the trademark is yours, not Mr. Barton’s, even though he may have the registration. As strange as it may seem, Zillow would lose if they sued you and further, YOU could strip Zillow of the name.
4. Since trademark law protects from similary confusing marks & their source, two people can register the same brand names so long as they are for unrelated good or servicess and there is no “likelihood of confusion”. Thus, you can have Zillow Zippers. Provided you don’t copy their stylizing and color, you’re fine under trademark law.
TIP: Since you cannot register a trademark before you actually use it, what do you do with your just obtained domain name? Answer: You can register what’s called an “Intent to Use” application. Think of it as a reservation of the name with the trademark office. Once granted you can wait until you’re actually using the name to complete the formal registration.
