Articles

Trademarks, Domain Names and the Web

By James Duda

(Originally published in the UMASS Family Business Center Related Matters newsletter, Fall 2000.)

When your business creates a place for itself on the Internet it immediately expands its market boundaries and joins in the global marketplace. With these expanded opportunities comes a broader range of rights that must be protected and respected.

Significant among these rights are those associated with trade and service marks. A trade or service mark is a distinctive word, phrase, or symbol that identifies the source of a product or service. Generally, absent federal registration, the geographical area within which a non-registered mark is used defines the area within which the mark is deemed to have legal significance. As a result, similar marks can be, and often are, used by different entities in separate areas of the country.

If you are planning to use a mark “on-line” you should evaluate the territorial limits within which your mark is currently entitled to legal protection and determine whether a national expansion of your use of the mark will come into conflict with another party’s mark elsewhere. Failure to address these issues before joining the web may mean that your newly “on-line” business will find itself on the losing side of a trademark infringement suit. If that includes a ruling that you cannot use your mark in one area of the country, the effect may be that you may not be able to use the mark at all on the Internet.

In the context of developing a website, these considerations are perhaps most important with respect to the selection of your site’s address, the so-called “domain name.” Ideally, you should chose a domain name that exploits your mark, whether it is well-established (see “www.massmutual.com”) or being newly developed in connection with your new website (see “www.berkshireinns.com”). You do not want to devote considerable time and resources to registering and marketing a domain name associated with your trademark, however, only to learn later that further use of the mark will be prohibited because it is infringing upon the enforceable trademark rights of another.

There are a number of steps that you can take to protect yourself from such an outcome. First, regardless of how long you have used a particular mark, you should conduct a diligent search to determine if the mark is already in use elsewhere. As an obvious first step, this should involve a simple search for the mark on the Internet. You should also conduct a trademark search on-line using the Trademark Electronic Search System (TESS) maintained by the United States Patent and Trademark Office (USPTO) at www.uspto.gov. The search can also involve one of the several private subscription-based companies, such as CompuServe and CompuMark, which offers access to an on-line federal and state trademark database called Trademarkscan. For greatest protection, however, you should have a trademark search conducted by a professional search agency that will check federal and state trademark registers, journals, telephone books, and magazines.

Assuming you find that no one is commercially – and legitimately – using a similar mark elsewhere in the country, you should register the mark to be used as your domain name with the USPTO if you have not already done so. A party that registers its mark with the USPTO is treated as though it has established a national market for its product associated with the mark as of the date of registration, regardless of the actual scope of that market. The party is further considered to have put the entire nation on notice of the use of its mark and is thus granted protection against any subsequent user of the same mark anywhere in the country. Note, however, that registration will not take away the rights of a legitimate prior user of the same mark in its own territory, although it generally will prevent further expansion of the market within which that prior user may use the mark.

A diligent search followed by registration with the PTO of the mark to be used in your domain name, therefore, will likely prevent any subsequent user from later claiming rights in a similar mark elsewhere. Registration is a fairly simple process and, as of November 29, 2000, involves an application fee of $325. The PTO, after receiving the application, will review the application for errors, make its own assessment of whether the subject mark is similar to any existing mark being used on similar products or services, and determine whether the mark is on a list of prohibited or reserved names or otherwise cannot be registered for lack of distinctiveness. Assuming all of these are resolved in the negative, the PTO will then publish the mark and, if the mark is not challenged, it will list the mark in the Principal Register.

Anyone who thereafter uses a mark similar to your mark on the Internet or elsewhere, in connection with a similar product or service, will be presumed to be a “willful infringer” and subject to money damages. More importantly, you will now have maximum assurance that your future investments in your worldwide website will not be diminished because your site’s trademark violates the trademark rights of another.

James Duda heads the firm's Intellectual Property Group and is a member of our Environmental Law Department. He can be contacted at 413/272-6284 or by e-mail at jduda@bulkley.com.