A trademark or service mark is a word, name, symbol or device used to identify goods or services and distinguish them from others. Trademarks and service marks indicate both the source of origin and quality of the goods or services with which they are associated.
The selection of a trademark may be very important in terms of the trademark owner‘s ability to obtain federal registration and prevent others from using the mark. For those businesses intending to offer goods or services over the Internet, the selection of a trademark should be done in connection with registering the domain name. Typically, legal counsel is consulted regarding whether federal registration of the mark is likely in view of the inherent qualities of the mark (i.e., whether it is generic, descriptive, suggestive, or arbitrary) and based upon the use of similar or identical marks by others. A quick WHOIS search at NSI’s web site at http://www.networksolutions.com/whois will identify whether the domain name has already been registered. As thousands of domain names are being registered daily, it is often a good idea to register the proposed mark as a domain name early in order to insure its availability.
Although federal registration of a mark is not necessary to use the mark, registration does provide substantial procedural advantages if the trademark owner should ever be faced with the task of stopping a potential infringer. Furthermore, a federal trademark registration for a mark identical to a domain name may have tremendous value when involved in a domain name dispute under either the ACPA or the UDRP, as discussed in the preceding section.
Once a trademark has been federally registered, it should be identified either with the word “registered” or with the symbol ®. An unregistered trademark should be identified with the letters ™ placed in close association with the word TM or symbol that is the trademark.
A domain name in and of itself is not necessarily a trademark, although many domain names attain trademark status because they are used to identify the source of particular goods or services. Similarly, registration of a domain name alone does not create priority for later trademark rights in a domain name, even if the domain name was registered before the trademark’s registration, Brookfield Communications. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). In Brookfield, the court held that priority would be based upon the time when a party announced their web site in a public and widespread manner or otherwise attempted to create an association in the minds of consumers between the domain name and its owner. In so holding, the Brookfield court clarified that ownership of an intent-to-use website, without further action, does not give rise to trademark rights. Proposed marks used only as a domain name must be registered for the proper services. The Patent and Trademark Office (PTO) has published a position paper on registering domain names, setting forth its current policy on this issue. That paper is available at http://www.uspto.gov/web/ offices/tac/domain.
- More information on domain name disputes