By Attorneys Steve Elias and Patricia Gima
FIRST EDITION March 2000
EDITOR Mary Randolph
PROOFREADER Robert Wells
INDEXER Ellen Davenport
COVER Toni Ihara
PRINTING Bertlesmann Industry Services
Copyright © 2000 by Stephen Elias and Patricia Gima. All Rights Reserved. Printed in the U.S.A.
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Sunday, December 6, 2009
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To stay current, follow the "Update" service at our website at www.nolo.com. In another effort to help you use Nolo's latest materials, we offer a 35% discount off the purchase of the new edition of your Nolo book when you turn in the cover of an earlier edition. (See the "Special Upgrade Offer" in the back of the book.) This book was last revised in March 2000.
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This product provides information and general advice about the law. But laws and procedures change frequently, and they can be interpreted differently by different people. For specific advice geared to your specific situation, consult an expert. No book, software or other published material is a substitute for personalized advice from a knowledgeable lawyer licensed to practice law in your state.
Acknowledgments
Thanks to Patti Gima, my wonderful co-author, and to Mary Randolph for her marvelous editing and ever-cheerful support for this book. Thanks also to the many wonderful folks at Nolo who keep the Nolo flame burning bright and bring our goods to market.
Steve Elias
Many thanks to my husband, Joe, and my son, Jordan, for their unwavering support. Thank you, Mary Randolph, for your precision editing. Thanks, Steve Elias, for being a great co-author. Thanks,too, to Terri Hearsh for the swift and wonderful book layout.
Steve Elias
Many thanks to my husband, Joe, and my son, Jordan, for their unwavering support. Thank you, Mary Randolph, for your precision editing. Thanks, Steve Elias, for being a great co-author. Thanks,too, to Terri Hearsh for the swift and wonderful book layout.
Dedications
To Rubin Santiago Elias, a good friend, great son and true child of the Internet.
Steve Elias
I'd like to dedicate this book (or my portion of it ;-)) to Jordan and Joe. Two constant sources of creativity.
Patricia Gima
Steve Elias
I'd like to dedicate this book (or my portion of it ;-)) to Jordan and Joe. Two constant sources of creativity.
Patricia Gima
About the Authors
Stephen Elias received a law degree from Hastings College of Law in 1969. He practiced in California, New York and Vermont until 1980 when he decided to make a full-time career of helping nonlawyers understand and use the law. Steve has written and edited over 30 books for Nolo Press including six books on intellectual property law. He co-authored Trademark: Legal Care for Your Business and Product Name and is the legal editor of Patent it Yourself, The Inventor's Notebook, The Copyright Handbook, Copyright Your Software and Software Development: A Legal Guide.
Patricia Gima has been an editor and author at Nolo.com since 1993. Patricia has practiced law in he areas of copyright, trademark and software licensing. She is currently the editor of several ntellectual property titles published by Nolo, including Trademark: Legal Care for Your Business & Product Name, and License Your Invention and Patent Searching Made Easy. Patricia is also co-author of Nolo's Pocket Guide to California Law and The Trademark Registration Kit.
Patricia Gima has been an editor and author at Nolo.com since 1993. Patricia has practiced law in he areas of copyright, trademark and software licensing. She is currently the editor of several ntellectual property titles published by Nolo, including Trademark: Legal Care for Your Business & Product Name, and License Your Invention and Patent Searching Made Easy. Patricia is also co-author of Nolo's Pocket Guide to California Law and The Trademark Registration Kit.
Overview
To do business on the Web, you'll need at least one domain name—the yada-yada-dot-com that has become so familiar in commercials and print advertising. Your domain name may be the name you already use for a business, with a dot-com added, or a new name that you think will do a good job of getting people to your website. If you follow the lead of many businesses, you'll use multiple domain names to help the widest possible number of potential customers find your site among the many thousands out there.
Choosing a name, or more than one, for your website is no trivial matter—your decisions can make or break your business. This explains why some domain names have been auctioned off for huge amounts of money. The current record-holder is business.com, which went for an astounding $7.5 million. The winning bidder apparently believes the name has enough customer-drawing power to make it worthwhile. Fortunately for small e-commerce start-ups with limited budgets, most businesses make up their domain names or use names that they are already using as trademarks, and don't pay anyone a penny for the privilege.
Domain Name Anatomy
Domain names consist of two main parts: the top-level domain name, or TLD, and the second-level domain name, or SLD. The SLD comes first. For example, in nolo.com, nolo is the SLD.
The TLD comes at the end of the domain name, after the ubiquitous dot. TLDs are organized, for U.S. participants, into five categories:
•.com, for commercial groups
•.edu, for educational institutions
•.gov, for governmental entities
•.org, for nonprofit organizations, and
•.net, for interactive discussion groups.
It's the SLD that makes your domain name unique. Almost all U.S. businesses choose to operate under the .com domain. There are plans to introduce a number of new TLDs, such as .inc and .stor, but it hasn't happened yet. And even when it does, most businesses are still going to want to be "dotcoms." Other countries have their own TLDs—for example, .fr for France, .gr for Greece, .to for Tonga.
Choosing a name, or more than one, for your website is no trivial matter—your decisions can make or break your business. This explains why some domain names have been auctioned off for huge amounts of money. The current record-holder is business.com, which went for an astounding $7.5 million. The winning bidder apparently believes the name has enough customer-drawing power to make it worthwhile. Fortunately for small e-commerce start-ups with limited budgets, most businesses make up their domain names or use names that they are already using as trademarks, and don't pay anyone a penny for the privilege.
Domain Name Anatomy
Domain names consist of two main parts: the top-level domain name, or TLD, and the second-level domain name, or SLD. The SLD comes first. For example, in nolo.com, nolo is the SLD.
The TLD comes at the end of the domain name, after the ubiquitous dot. TLDs are organized, for U.S. participants, into five categories:
•.com, for commercial groups
•.edu, for educational institutions
•.gov, for governmental entities
•.org, for nonprofit organizations, and
•.net, for interactive discussion groups.
It's the SLD that makes your domain name unique. Almost all U.S. businesses choose to operate under the .com domain. There are plans to introduce a number of new TLDs, such as .inc and .stor, but it hasn't happened yet. And even when it does, most businesses are still going to want to be "dotcoms." Other countries have their own TLDs—for example, .fr for France, .gr for Greece, .to for Tonga.
A.Thinking About the Law
You may have thought a lot about the marketing aspects of your domain name—how the name can attract visitors, communicate what you do, stick in customers' minds and inspire confidence in your business. All those factors definitely deserve attention, but there's another set of concerns that is at least as important: how trademark law affects your choice and use of a name.
If your domain name is the same as or similar to a trademark already being used by a competing or related business, that business might force you to stop using it somewhere down the road. And if you have built up considerable goodwill under the domain name when a trademark conflict flares up, this could amount to a business catastrophe. You can avoid this potential disaster by picking a domain name that is free and clear from legal conflicts.
If Someone Challenges Your Domain Name
This book is not designed to help you if your existing domain name comes under legal attack—for instance, if another business demands that you surrender your domain name. If that happens, we recommend Trademark: Legal Care for Your Product and Service Name, by Stephen Elias and Kate McGrath (Nolo), or to Nolo's downloadable eGuide, Trademark Disputes: Who Wins, Who Loses & Why. You may also need to consult a lawyer.
Some names are wonderful from a commercial perspective but close enough to existing names to cause a legal tiff, such as the dispute between etoys.com, a large toy dealer, and etoy.com, a small website of some English artists. Still other names may be unique as domain names but identical or confusingly similar to names used by brick-and-mortar-companies—a fact which easily can give rise to a trademark infringement lawsuit.
Fortunately, you can select a domain name that will be both commercially appropriate for your business and free from legal challenges by other businesses. Your best strategy may be to leverage an existing business name, with strong customer recognition, by using it (or part of it) as your domain name. But if you're just starting out, you may want to invent something catchy and different.
If your domain name is the same as or similar to a trademark already being used by a competing or related business, that business might force you to stop using it somewhere down the road. And if you have built up considerable goodwill under the domain name when a trademark conflict flares up, this could amount to a business catastrophe. You can avoid this potential disaster by picking a domain name that is free and clear from legal conflicts.
If Someone Challenges Your Domain Name
This book is not designed to help you if your existing domain name comes under legal attack—for instance, if another business demands that you surrender your domain name. If that happens, we recommend Trademark: Legal Care for Your Product and Service Name, by Stephen Elias and Kate McGrath (Nolo), or to Nolo's downloadable eGuide, Trademark Disputes: Who Wins, Who Loses & Why. You may also need to consult a lawyer.
Some names are wonderful from a commercial perspective but close enough to existing names to cause a legal tiff, such as the dispute between etoys.com, a large toy dealer, and etoy.com, a small website of some English artists. Still other names may be unique as domain names but identical or confusingly similar to names used by brick-and-mortar-companies—a fact which easily can give rise to a trademark infringement lawsuit.
Fortunately, you can select a domain name that will be both commercially appropriate for your business and free from legal challenges by other businesses. Your best strategy may be to leverage an existing business name, with strong customer recognition, by using it (or part of it) as your domain name. But if you're just starting out, you may want to invent something catchy and different.
B. Protecting the Name You Choose
To be sure that your name really is different—not identical to or similar enough to someone else'strademarked name—you need to search for available domain names and register your domain name with a domain name registry service. The next step is to file an application with the U.S. Patent and Trademark Office to register your domain name as a trademark.
Steps in Choosing and Reserving a Domain Name
£If you've picked out a domain name, reserve it so it won't get snapped up by another business. (Chapter 2)
£If you haven't yet chosen a domain name, select one that will get people to your website and also qualify for protection as a trademark. (Chapter 3 and Chapter 4)
£If your preferred name is taken, consider alternate names and your legal options. (Chapter 5)
£Use the Internet to search for existing trademarks that legally conflict with your name. (Chapter 6 and Chapter 7)
£If your name conflicts with an existing trademark, choose another name (Chapter 4) or, if you are already using the name as a mark, assert your rights as a trademark owner. (Chapter 5)
£For maximum protection for your name, apply for federal trademark registration. (Chapter 8)
Steps in Choosing and Reserving a Domain Name
£If you've picked out a domain name, reserve it so it won't get snapped up by another business. (Chapter 2)
£If you haven't yet chosen a domain name, select one that will get people to your website and also qualify for protection as a trademark. (Chapter 3 and Chapter 4)
£If your preferred name is taken, consider alternate names and your legal options. (Chapter 5)
£Use the Internet to search for existing trademarks that legally conflict with your name. (Chapter 6 and Chapter 7)
£If your name conflicts with an existing trademark, choose another name (Chapter 4) or, if you are already using the name as a mark, assert your rights as a trademark owner. (Chapter 5)
£For maximum protection for your name, apply for federal trademark registration. (Chapter 8)
Overview
If you've already chosen a domain name, your first step should be to register it with a domain name registration service. This will give you the exclusive right to use that domain name.
You may want to register a name—or more than one—even if you haven't yet searched for possible trademark conflicts (see Chapter 6) or made a final decision about your domain name. Websites are going up in great numbers, and if you wait, you may lose the name you want. You do risk wasting the amount of the reservation or registration fee if you later decide to use a different name. But that risk may be worth it if you do ultimately decide to use your first choice and you've managed to prevent someone else from grabbing it first.
Example:Geoff wants to use the domain name doctortrademark.com for his website, which offers legal advice on trademarks. He checks the availability of that name and learns that it has been taken. Geoff then checks drtrademark.com and finds that it's available. Although Geoff knows (because he has read Chapter 7) that using such a similar domain name might infringe the doctortrademark.com trademark, he decides to go ahead and reserve the name until he can do some more investigation regarding the other "Doctor Trademark" website.
If the exact domain name you want has been taken by someone else, you will not be able to register it unless you have already been using the name as a trademark and are willing to take the steps described in Chapter 5 to assert your legal rights as a trademark owner.
CautionDon't be a cybersquatter. It is against federal law to register someone else's personal or business name as your domain name, if you're doing it because you want to sell the name back to its owner for a profit.
If you are choosing a domain name for the purpose of using it on a website that will be doing legitimate commerce, you have nothing to worry about. However, if you are buying up domain names so you can sell them later, you should definitely get some advice from a lawyer about the legality of your activity. The federal Anti-Cybersquatting Consumer Protection Act, the law that prohibits cybersquatting, is discussed in detail in Chapter 5.
You may want to register a name—or more than one—even if you haven't yet searched for possible trademark conflicts (see Chapter 6) or made a final decision about your domain name. Websites are going up in great numbers, and if you wait, you may lose the name you want. You do risk wasting the amount of the reservation or registration fee if you later decide to use a different name. But that risk may be worth it if you do ultimately decide to use your first choice and you've managed to prevent someone else from grabbing it first.
Example:Geoff wants to use the domain name doctortrademark.com for his website, which offers legal advice on trademarks. He checks the availability of that name and learns that it has been taken. Geoff then checks drtrademark.com and finds that it's available. Although Geoff knows (because he has read Chapter 7) that using such a similar domain name might infringe the doctortrademark.com trademark, he decides to go ahead and reserve the name until he can do some more investigation regarding the other "Doctor Trademark" website.
If the exact domain name you want has been taken by someone else, you will not be able to register it unless you have already been using the name as a trademark and are willing to take the steps described in Chapter 5 to assert your legal rights as a trademark owner.
CautionDon't be a cybersquatter. It is against federal law to register someone else's personal or business name as your domain name, if you're doing it because you want to sell the name back to its owner for a profit.
If you are choosing a domain name for the purpose of using it on a website that will be doing legitimate commerce, you have nothing to worry about. However, if you are buying up domain names so you can sell them later, you should definitely get some advice from a lawyer about the legality of your activity. The federal Anti-Cybersquatting Consumer Protection Act, the law that prohibits cybersquatting, is discussed in detail in Chapter 5.
A. Where to Register
A number of new domain name registration agencies are getting ready to open their electronic doors. (See "New Domain Name Registries," below.) For now, however, we recommend that you use Network Solutions, Inc., to check the availability of and register your name. NSI is the leading domain name registrar in the world, with over five million registrations to date and, until mid-1999, was the only U.S. registry. We base our recommendation primarily on NSI's successful track record; the newer registries, while competitive in terms of price, lack NSI's experience.
New Domain Name Registries
The international group that is now in charge of Internet domain name policy (ICANN, short forInternational Corporation for Assigned Names and Numbers) is in the process of chartering a number of additional domain name registering agencies. All of these agencies use a shared, central registry, maintained by NSI, so that there will be no duplications. The main stated purpose of having a number of registering agencies is to foster competition. While NSI is still the main game in town, more choices may mean lower registration fees. A list of approved domain name registries is available at www.internic.net/alpha.html.
After checking the availability of your name with NSI, you can either register it or reserve it with a credit card. If you want to register the name, you must be prepared to give NSI information about your Internet Service Provider (ISP) and about who will be physically maintaining (hosting) your website. If you don't have immediate plans to attach your domain name to a website, or haven't gathered the information you need to register from your ISP (or intended website host), you can still reserve the name. The ISP and hosting information will not be required until you are ready to put the domain name into use. Reserving rather than registering the name costs an additional $49, on top of the basic $70 fee for a two-year registration. You can register a name for up to 10 years.
New Domain Name Registries
The international group that is now in charge of Internet domain name policy (ICANN, short forInternational Corporation for Assigned Names and Numbers) is in the process of chartering a number of additional domain name registering agencies. All of these agencies use a shared, central registry, maintained by NSI, so that there will be no duplications. The main stated purpose of having a number of registering agencies is to foster competition. While NSI is still the main game in town, more choices may mean lower registration fees. A list of approved domain name registries is available at www.internic.net/alpha.html.
After checking the availability of your name with NSI, you can either register it or reserve it with a credit card. If you want to register the name, you must be prepared to give NSI information about your Internet Service Provider (ISP) and about who will be physically maintaining (hosting) your website. If you don't have immediate plans to attach your domain name to a website, or haven't gathered the information you need to register from your ISP (or intended website host), you can still reserve the name. The ISP and hosting information will not be required until you are ready to put the domain name into use. Reserving rather than registering the name costs an additional $49, on top of the basic $70 fee for a two-year registration. You can register a name for up to 10 years.
B. How to Check the Availability of and Register a Domain Name
NSI offers a quick way for you to find out whether a name is available, and if it is, to register it on the spot. Just go to www.networksolutions.com and type the name you want in the Register a Web Address box. Choose a top-level domain to the right (.com for most users) and click Go! If the name is available, you'll have an opportunity to also register the .net and .org versions of the same name if they're available (see Figure 2, below). Registration costs a minimum of $70 for a two-year period. Reservations cost an additional $49, for a total of $119.
If your name is taken, you may be interested in NSI's WHOIS search service, which gives you information about the registrant of any domain name registered with NSI. Say, for example, you have chosen Webvan, Inc., as the name of your grocery delivery business and want to use webvan.com as your domain name. However, you soon discover that someone else has already taken this domain name. You run the name through the WHOIS search engine on the Network Solutions home page and find that Intelligent Systems for Retail, Inc., is the domain name registra(see Figure 3, below). The search results also give you a contact name, phone number, address and email address. From there, you can decide whether you want to contact Intelligent Systems foRetail, Inc., perhaps to make an offer to buy the name. (Chapter 5 discusses more options if your chosen name is not available.)
If your name is taken, you may be interested in NSI's WHOIS search service, which gives you information about the registrant of any domain name registered with NSI. Say, for example, you have chosen Webvan, Inc., as the name of your grocery delivery business and want to use webvan.com as your domain name. However, you soon discover that someone else has already taken this domain name. You run the name through the WHOIS search engine on the Network Solutions home page and find that Intelligent Systems for Retail, Inc., is the domain name registra(see Figure 3, below). The search results also give you a contact name, phone number, address and email address. From there, you can decide whether you want to contact Intelligent Systems foRetail, Inc., perhaps to make an offer to buy the name. (Chapter 5 discusses more options if your chosen name is not available.)
C. What to Register
In addition to your product or service name, you may want to register one or more related names, if they are available. These might be common misspellings of the primary name, names of specific product brands owned by your business and names that reflect the generic nature of your products. For instance, Peet's Coffee & Tea owns not only peets.com, but also coffee.com. Peet's might want to lock up petes.com (for the bad spellers), petescoffee.com and peetscoffee.com. (See Chapter 4 for more on how to choose a great domain name.)
Overview
If you are doing e-business on your website, or using the website to advertise goods or services you offer in the "real world," your domain name is also a trademark. Simply put, a trademark is any device that distinguishes your product or service from others in the marketplace, or designates their origin. For instance, say Jonah Ishmael creates an online art gallery that features and sells whale art by various artists. The art gallery is called Jonah and the Whale and resides on a website with the domain name ahab.com. Jonah is using ahab.com as a trademark because it is used to bring visitors to his commercially oriented website. Jonah is also using Jonah and the Whale as a trademark for the particular product being offered on the website—whale art.
Here are some examples of domain names that are also trademarks:
•Amazon.com (online retailer of books, CDs, toys and other items)
•Drugstore.com (online pharmaceuticals sales)
•Nolo.com (online legal information provider and publisher and retailer of legal books, forms and software).
A domain name isn't always a trademark. If ahab.com were a personal, noncommercial website with pictures of Jonah's family, poems he writes from time to time and a statement of his political philosophy, the domain name would not be a trademark. This is because the term ahab wouldn't be used to identify goods or services or an entity doing business on or off the Web.
Also, if a domain name is the same name by which the product or service is typically described, the law will consider it "generic" and won't treat it as a trademark. For instance, the domain name drugs.com uses a word that is the generic term for a class of products. As we point out in more detail in Chapter 4, generic names like drugs.com may make fabulous domain names but will most likely never receive protection as a trademark because the law does not allow monopolies over generic terms.
Here are some examples of domain names that are also trademarks:
•Amazon.com (online retailer of books, CDs, toys and other items)
•Drugstore.com (online pharmaceuticals sales)
•Nolo.com (online legal information provider and publisher and retailer of legal books, forms and software).
A domain name isn't always a trademark. If ahab.com were a personal, noncommercial website with pictures of Jonah's family, poems he writes from time to time and a statement of his political philosophy, the domain name would not be a trademark. This is because the term ahab wouldn't be used to identify goods or services or an entity doing business on or off the Web.
Also, if a domain name is the same name by which the product or service is typically described, the law will consider it "generic" and won't treat it as a trademark. For instance, the domain name drugs.com uses a word that is the generic term for a class of products. As we point out in more detail in Chapter 4, generic names like drugs.com may make fabulous domain names but will most likely never receive protection as a trademark because the law does not allow monopolies over generic terms.
A. Your Rights As a Trademark Owner
Why should you care whether or not your domain name is a trademark? Because as the owner of a trademark, you have legal rights that may be very important for your business. If you're the first person or business to actually use a trademark in connection with the sale of goods or services, you are the "senior user," and you have priority in case of a conflict with a later user. This is true whether or not you've registered the trademark with the U.S. Patent and Trademark Office.
Example: Peter develops software for taking orders over the Web and launches the sale of his Bearware software online. He uses the mark Bearware prominently on his website and as his domain name, bearware.com. Peter makes his software available for purchase online under the mark Bearware and through the domain name bearware.com on February 1, 2000, so that is the date of first use for purposes of trademark seniority. Gail develops similar software and also plans to market it under the trademark and domain name Bearware.com. But Gail doesn't offer her software for sale until March 1, 2000.
Because Peter was the first to use the mark Bearware to sell his software, he is the senior user. If Gail sues him for trademark infringement, he will win the right to continue using the mark for selling his software and as his domain name.
If you're the senior user, you can go to court to prevent others from using your trademark—as a domain name or otherwise—if the use would likely cause customers to confuse someone else's product or service with yours, or to be confused as to the origin of the product or service. (See Chapter 7 for more on what constitutes customer confusion.)
Example:Gail decides to sell her software under the Bearware mark over the Internet, but she uses the domain name bareware.com. Peter can sue Gail for trademark infringement, asking the court to stop Gail from using the Bearware mark and the barewear.com domain name. Peter will make a number of claims:
1.He is the senior user of the mark Bearware.
2.Gail's use of the same mark to market and sell her software product (which is similar to Peter's) and her use of a domain name that sounds exactly like Peter's trademark are likely to cause customers to confuse her product and website with Peter's.
3.Gail's use of the same mark as Peter's for a similar software application is likely to cause customers to mistakenly believe that both applications come from the same company.
Example: Peter develops software for taking orders over the Web and launches the sale of his Bearware software online. He uses the mark Bearware prominently on his website and as his domain name, bearware.com. Peter makes his software available for purchase online under the mark Bearware and through the domain name bearware.com on February 1, 2000, so that is the date of first use for purposes of trademark seniority. Gail develops similar software and also plans to market it under the trademark and domain name Bearware.com. But Gail doesn't offer her software for sale until March 1, 2000.
Because Peter was the first to use the mark Bearware to sell his software, he is the senior user. If Gail sues him for trademark infringement, he will win the right to continue using the mark for selling his software and as his domain name.
If you're the senior user, you can go to court to prevent others from using your trademark—as a domain name or otherwise—if the use would likely cause customers to confuse someone else's product or service with yours, or to be confused as to the origin of the product or service. (See Chapter 7 for more on what constitutes customer confusion.)
Example:Gail decides to sell her software under the Bearware mark over the Internet, but she uses the domain name bareware.com. Peter can sue Gail for trademark infringement, asking the court to stop Gail from using the Bearware mark and the barewear.com domain name. Peter will make a number of claims:
1.He is the senior user of the mark Bearware.
2.Gail's use of the same mark to market and sell her software product (which is similar to Peter's) and her use of a domain name that sounds exactly like Peter's trademark are likely to cause customers to confuse her product and website with Peter's.
3.Gail's use of the same mark as Peter's for a similar software application is likely to cause customers to mistakenly believe that both applications come from the same company.
A. Your Rights As a Trademark Owner
Why should you care whether or not your domain name is a trademark? Because as the owner of a trademark, you have legal rights that may be very important for your business. If you're the first person or business to actually use a trademark in connection with the sale of goods or services, you are the "senior user," and you have priority in case of a conflict with a later user. This is true whether or not you've registered the trademark with the U.S. Patent and Trademark Office.
Example: Peter develops software for taking orders over the Web and launches the sale of his Bearware software online. He uses the mark Bearware prominently on his website and as his domain name, bearware.com. Peter makes his software available for purchase online under the mark Bearware and through the domain name bearware.com on February 1, 2000, so that is the date of first use for purposes of trademark seniority. Gail develops similar software and also plans to market it under the trademark and domain name Bearware.com. But Gail doesn't offer her software for sale until March 1, 2000.
Because Peter was the first to use the mark Bearware to sell his software, he is the senior user. If Gail sues him for trademark infringement, he will win the right to continue using the mark for selling his software and as his domain name.
If you're the senior user, you can go to court to prevent others from using your trademark—as a domain name or otherwise—if the use would likely cause customers to confuse someone else's product or service with yours, or to be confused as to the origin of the product or service. (See Chapter 7 for more on what constitutes customer confusion.)
Example:Gail decides to sell her software under the Bearware mark over the Internet, but she uses the domain name bareware.com. Peter can sue Gail for trademark infringement, asking the court to stop Gail from using the Bearware mark and the barewear.com domain name. Peter will make a number of claims:
1.He is the senior user of the mark Bearware.
2.Gail's use of the same mark to market and sell her software product (which is similar to Peter's) and her use of a domain name that sounds exactly like Peter's trademark are likely to cause customers to confuse her product and website with Peter's.
3.Gail's use of the same mark as Peter's for a similar software application is likely to cause customers to mistakenly believe that both applications come from the same company.
Example: Peter develops software for taking orders over the Web and launches the sale of his Bearware software online. He uses the mark Bearware prominently on his website and as his domain name, bearware.com. Peter makes his software available for purchase online under the mark Bearware and through the domain name bearware.com on February 1, 2000, so that is the date of first use for purposes of trademark seniority. Gail develops similar software and also plans to market it under the trademark and domain name Bearware.com. But Gail doesn't offer her software for sale until March 1, 2000.
Because Peter was the first to use the mark Bearware to sell his software, he is the senior user. If Gail sues him for trademark infringement, he will win the right to continue using the mark for selling his software and as his domain name.
If you're the senior user, you can go to court to prevent others from using your trademark—as a domain name or otherwise—if the use would likely cause customers to confuse someone else's product or service with yours, or to be confused as to the origin of the product or service. (See Chapter 7 for more on what constitutes customer confusion.)
Example:Gail decides to sell her software under the Bearware mark over the Internet, but she uses the domain name bareware.com. Peter can sue Gail for trademark infringement, asking the court to stop Gail from using the Bearware mark and the barewear.com domain name. Peter will make a number of claims:
1.He is the senior user of the mark Bearware.
2.Gail's use of the same mark to market and sell her software product (which is similar to Peter's) and her use of a domain name that sounds exactly like Peter's trademark are likely to cause customers to confuse her product and website with Peter's.
3.Gail's use of the same mark as Peter's for a similar software application is likely to cause customers to mistakenly believe that both applications come from the same company.
B. Trademark Registration
Trademark ownership in the United States is based on who is first to use the mark (the senior user). But you can strengthen your ownership by registering a mark with the United States Patent and Trademark Office. This same rule applies to domain names that serve as trademarks—that is, domain names that are used as addresses for commercial websites. Generally, you can federally register a trademark if it is:
•used in interstate or international commerce (which includes virtually all commercial domain names)
•distinctive to some degree (that is, memorable in some way)
•not scandalous or immoral (four-letter words are verboten) and
•not likely to create customer confusion when compared with other registered marks.
The primary benefits of federal registration are that you are presumed to be the owner of the mark throughout the whole country, and anyone who infringes your mark will be presumed to have done it willfully. Infringement means you can collect large money damages, and possibly attorneys' fees, in a federal court lawsuit. Also, you are entitled to use the "r in a circle" notation next to your name to inform the world of your mark ownership. Unregistered marks are identified with the less powerful "TM ."
Chapter 8 explains the rules and benefits of registration in more detail and provides step-by-step instructions for filing a registration application on the Web.
TipFor a more complete treatment of these and other trademark issues, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Kate McGrath (Nolo), or visit the Patent, Copyright and Trademark section of Nolo's free Legal Encyclopedia at www.nolo.com.
Protection for Unregistered Trademarks
State Trademark Registration Laws. You can register your trademark with your state, but there are few practical benefits. State registrations were more important when it was common for marks to be used solely within a single state, which meant they didn't qualify for federal registration. However, with the advent of the Web, very few marks are now restricted to a state's geographical borders, and federal registration is definitely the preferred approach.
State and Federal Unfair Competition Laws. Trademarks that have not been federally registered can still receive certain kinds of limited protection under state and federal unfair competition laws. These laws bar other businesses from using your trademark in confusing and unfair ways. Protection from unfair competition is most useful when another business is trying to use your trademark to create the impression that its business is affiliated with yours. In other words, unfair competition laws can help you if someone isn't making it clear that they are not connected to your business.
For more on unfair competition, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias & Kate McGrath (Nolo).
•used in interstate or international commerce (which includes virtually all commercial domain names)
•distinctive to some degree (that is, memorable in some way)
•not scandalous or immoral (four-letter words are verboten) and
•not likely to create customer confusion when compared with other registered marks.
The primary benefits of federal registration are that you are presumed to be the owner of the mark throughout the whole country, and anyone who infringes your mark will be presumed to have done it willfully. Infringement means you can collect large money damages, and possibly attorneys' fees, in a federal court lawsuit. Also, you are entitled to use the "r in a circle" notation next to your name to inform the world of your mark ownership. Unregistered marks are identified with the less powerful "TM ."
Chapter 8 explains the rules and benefits of registration in more detail and provides step-by-step instructions for filing a registration application on the Web.
TipFor a more complete treatment of these and other trademark issues, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Kate McGrath (Nolo), or visit the Patent, Copyright and Trademark section of Nolo's free Legal Encyclopedia at www.nolo.com.
Protection for Unregistered Trademarks
State Trademark Registration Laws. You can register your trademark with your state, but there are few practical benefits. State registrations were more important when it was common for marks to be used solely within a single state, which meant they didn't qualify for federal registration. However, with the advent of the Web, very few marks are now restricted to a state's geographical borders, and federal registration is definitely the preferred approach.
State and Federal Unfair Competition Laws. Trademarks that have not been federally registered can still receive certain kinds of limited protection under state and federal unfair competition laws. These laws bar other businesses from using your trademark in confusing and unfair ways. Protection from unfair competition is most useful when another business is trying to use your trademark to create the impression that its business is affiliated with yours. In other words, unfair competition laws can help you if someone isn't making it clear that they are not connected to your business.
For more on unfair competition, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias & Kate McGrath (Nolo).
C. Making a Domain Name a Strong Trademark
A distinctive domain name gets more legal protection as a trademark than a non-distinctive one does, and is usually more effective in the marketplace. The law grants distinctive domain names used as trademarks greater power to ward off copiers, for three reasons:
Distinctive names are memorable. The more distinctive a trademark is, like Yahoo!, the greater impression it makes on the customer's memory. This strong impression makes it more likely that a similar trademark, say Yoohoo.com used as a Web portal, will remind the customer of the original trademark. Needless to say, that can lead to confusion. Customers may think Yahoo! and Yoohoo are the same brand, or that they are related. They may mistakenly type in yoohoo.com instead of yahoo.com and go to the wrong website. They may be misled into thinking the reputation of one applies to the other. In either case, the rightful owner of the Yahoo! trademark may lose traffic, ad sales and profits.
Similar names are likely to confuse customers. The more distinctive a domain name is, the more likely it is that potential customers will assume that all products and services carrying that name originate from one source. For instance, it's reasonable to assume that all insurance-related services that carry the QuoteSmith mark, as in Quotesmith.com, originate from one company called QuoteSmith. You wouldn't make the same assumption for several quote services that use "value" in their names. The greater the likelihood that customers will associate a product or service carrying a particular name with a particular source, the greater the need to protect them against the confusion that would likely result if another business used the same or a similar name.
The business probably invested time and money to come up with the name. The more time, money and creativity that go into making a domain name distinctive, the more sense it makes to provide the mark with adequate protection. And if the distinctiveness comes from widespread customer recognition over time, it also makes sense to protect the business goodwill that has been built up under the mark.
To come up with a domain name that will serve you well as a trademark, follow these rules:
1.Use a name that's memorable or clever.
2.If you use a name that isn't distinctive, promote it so that it acquires a meaning in the marketplace.
3.Avoid conflicts with names that are already famous.
These strategies are discussed in Chapter 4.
Distinctive names are memorable. The more distinctive a trademark is, like Yahoo!, the greater impression it makes on the customer's memory. This strong impression makes it more likely that a similar trademark, say Yoohoo.com used as a Web portal, will remind the customer of the original trademark. Needless to say, that can lead to confusion. Customers may think Yahoo! and Yoohoo are the same brand, or that they are related. They may mistakenly type in yoohoo.com instead of yahoo.com and go to the wrong website. They may be misled into thinking the reputation of one applies to the other. In either case, the rightful owner of the Yahoo! trademark may lose traffic, ad sales and profits.
Similar names are likely to confuse customers. The more distinctive a domain name is, the more likely it is that potential customers will assume that all products and services carrying that name originate from one source. For instance, it's reasonable to assume that all insurance-related services that carry the QuoteSmith mark, as in Quotesmith.com, originate from one company called QuoteSmith. You wouldn't make the same assumption for several quote services that use "value" in their names. The greater the likelihood that customers will associate a product or service carrying a particular name with a particular source, the greater the need to protect them against the confusion that would likely result if another business used the same or a similar name.
The business probably invested time and money to come up with the name. The more time, money and creativity that go into making a domain name distinctive, the more sense it makes to provide the mark with adequate protection. And if the distinctiveness comes from widespread customer recognition over time, it also makes sense to protect the business goodwill that has been built up under the mark.
To come up with a domain name that will serve you well as a trademark, follow these rules:
1.Use a name that's memorable or clever.
2.If you use a name that isn't distinctive, promote it so that it acquires a meaning in the marketplace.
3.Avoid conflicts with names that are already famous.
These strategies are discussed in Chapter 4.
Overview
To help your Web business flourish, you want to pick a domain name that will:
•be easy for Web searchers to find
•help market your product or service
•serve as a strong trademark, so competitors won't be able to use it or something similar, and •be free of legal conflicts with other trademarks. This chapter explores strategies for meeting these sometimes contradictory goals. There's one consideration you can't get around: Domain names are limited to 26 characters, including the .com part. If you try to register or reserve a name that is too long, you'll be directed to provide a shorter version.
•be easy for Web searchers to find
•help market your product or service
•serve as a strong trademark, so competitors won't be able to use it or something similar, and •be free of legal conflicts with other trademarks. This chapter explores strategies for meeting these sometimes contradictory goals. There's one consideration you can't get around: Domain names are limited to 26 characters, including the .com part. If you try to register or reserve a name that is too long, you'll be directed to provide a shorter version.
A. One Website, Many Domain Names
It's an unfortunate but inescapable fact that a domain name that satisfies one of the goals listed above may sabotage another. For example, a domain name that gets lots of people to your website quickly may make a crummy trademark. Take coffee.com; it may be an excellent domain name, because many people who are looking for coffee vendors online are likely to type the word coffee into their browsers. But coffee.com wouldn't qualify as a trademark for a coffee-related website, because the word coffee in that context is generic—it describes the product itself. So if your website were named coffee.com, you wouldn't be able to do much about goodcoffee.com, blackcoffee.com, columbiancoffee.com or cupofcoffee.com. But if you named your coffee website something like javadelights.com, you would have an easier time of chasing away anything that was similar in sight, sound or meaning. Coffee.com or javadelights.com? What a choice.
Fortunately, you can have the best of both worlds—you can claim several domain names and route them all to a single website. In fact, you can have an unlimited number of domain names leading to your unique website. This is because underneath every website lurks a set of numbers (your Internet Protocol, or IP, address) that identifies your unique location on a particular Internet server. Your Internet service provider can set up a system that routes multiple domain names to your IP address, and so to your website.
The only factor limiting how many domain names you can use to bring users to your particular website is cost. NSI currently charges $70 to register a domain name for a two-year period, so registering ten domain names would cost only $700, a modest amount for many Internet startups.
Because Internet users vary in how they seek out goods, services and established businesses on the Internet, the more bases you cover the better. So the owners of a coffee-related website might, as an example, register cupofcoffee.com, coffeeyumyum.com and cupofjoe.com as well as javadelights.com.
Another way to leverage a domain name is to create variations by adding words to the front of it, with another dot. For example, if you were using www.jelly.com and wanted to promote the New England jams and jellies you were selling, you could also use www.Vermont. jelly.com, www.Maine.jelly.com or NewEnglandjelly.com and so on, without registering additional domain names. These domain names could link to specific parts of your website; your ISP could set it up for you.
You're free to create as many variations like this as you can think of. Just be sure to add another dot when you add to the name. The domain name www.Vermontjelly.com (without the dot after "Vermont") would be a completely different domain name from www.jelly.com, and you would have to register it separately.
A potential downside to this strategy is that some folks may forget to include the extra dots when entering your domain name in their browser, and as a result will get a "no server found" message. If they take the time to error-check, though, they should be able to figure it out.
Fortunately, you can have the best of both worlds—you can claim several domain names and route them all to a single website. In fact, you can have an unlimited number of domain names leading to your unique website. This is because underneath every website lurks a set of numbers (your Internet Protocol, or IP, address) that identifies your unique location on a particular Internet server. Your Internet service provider can set up a system that routes multiple domain names to your IP address, and so to your website.
The only factor limiting how many domain names you can use to bring users to your particular website is cost. NSI currently charges $70 to register a domain name for a two-year period, so registering ten domain names would cost only $700, a modest amount for many Internet startups.
Because Internet users vary in how they seek out goods, services and established businesses on the Internet, the more bases you cover the better. So the owners of a coffee-related website might, as an example, register cupofcoffee.com, coffeeyumyum.com and cupofjoe.com as well as javadelights.com.
Another way to leverage a domain name is to create variations by adding words to the front of it, with another dot. For example, if you were using www.jelly.com and wanted to promote the New England jams and jellies you were selling, you could also use www.Vermont. jelly.com, www.Maine.jelly.com or NewEnglandjelly.com and so on, without registering additional domain names. These domain names could link to specific parts of your website; your ISP could set it up for you.
You're free to create as many variations like this as you can think of. Just be sure to add another dot when you add to the name. The domain name www.Vermontjelly.com (without the dot after "Vermont") would be a completely different domain name from www.jelly.com, and you would have to register it separately.
A potential downside to this strategy is that some folks may forget to include the extra dots when entering your domain name in their browser, and as a result will get a "no server found" message. If they take the time to error-check, though, they should be able to figure it out.
B. If You're Already in Business
If you are launching a website as part of an existing business, you must first decide whether you want to use the name of your business for at least one of your domain names. Most businesses do. That's why you'll find apple.com, landsend.com, toysrus.com and so on.
The importance of a strong brand on the Internet can't be overstated. Strong national and global competition for products and services online demands strong branding and a correlation between brand and domain name in order to get customers to the right website.
For example, say you are looking for the website of Peet's Coffee & Tea, a well-known coffee supplier. Rather than use a search engine to hunt for sites related to the terms "coffee" or "tea," you probably would first just type "peets.com" into your browser. Your guess would be right, and you would go right to the Peet's website. Had Peet's not used its brand name for its domain name, you would have been at least temporarily diverted from your search. And if you share the general lack of patience of many Internet users, you might have given up. By using its strong brand name for its domain name, Peet's can rest assured that anyone looking for the brand will quickly end up at its website.
Using the company name for your domain name also allows you to keep whatever goodwill you have built in the name. Goodwill simply means the good relationship you have with your customers because you provide exceptional service or a truly wonderful product.
You may decide, however, that a short, catchy and easy-to-remember name is a good alternative (or addition) to just using your existing business name. For example, the Collin Street Bakery in Corsicana, Texas, sells fruitcakes and has for many years—but when it came time to go online, the owners chose fruitcake.com as their domain name.
Still another option is to use only part of your business name, or an abbreviated form of it, as your domain name. (You're limited to 26 characters total, remember.) For example, Turners Outdoorsman, a retail sporting goods store, uses turners.com; Motley Fool (investment advice) uses fool.com, and Kelley Blue Book (wholesale and retail prices for used cars) is kbb.com. AskJeeves, a well-known search engine, uses ask.com. Short domain names are generally preferable to long ones, because many Internet users type the domain names into their browsers rather than relying on their list of favorite or bookmarked sites, portals (Yahoo!, AOL), or special interest sites that offer collections of links for parents, seniors, investors or other groups.
Of course, you may want to use another name altogether (like the bakery that chose fruitcake.com), especially if your business name is long. For instance, a well-known bookstore chain in Northern California called A Clean Well-Lighted Place for Books uses bookstore.com as its domain name. And Finer Times Market Place, an antique dealer, uses classicwatch.com.
As mentioned, generic domain names make weak trademarks because they merely describe the goods or services offered on the website (for example, healthanswers.com, drugstore.com, coffee.com), but excellent domain names because they work to get people to the website. So, depending on how well known your existing business name is, it may make sense to use two names. Create a new and descriptive domain name, and use your existing business name both as a second domain name and to sell goods or services on the website itself. The rest of this chapter gives more tips on choosing a good name.
The importance of a strong brand on the Internet can't be overstated. Strong national and global competition for products and services online demands strong branding and a correlation between brand and domain name in order to get customers to the right website.
For example, say you are looking for the website of Peet's Coffee & Tea, a well-known coffee supplier. Rather than use a search engine to hunt for sites related to the terms "coffee" or "tea," you probably would first just type "peets.com" into your browser. Your guess would be right, and you would go right to the Peet's website. Had Peet's not used its brand name for its domain name, you would have been at least temporarily diverted from your search. And if you share the general lack of patience of many Internet users, you might have given up. By using its strong brand name for its domain name, Peet's can rest assured that anyone looking for the brand will quickly end up at its website.
Using the company name for your domain name also allows you to keep whatever goodwill you have built in the name. Goodwill simply means the good relationship you have with your customers because you provide exceptional service or a truly wonderful product.
You may decide, however, that a short, catchy and easy-to-remember name is a good alternative (or addition) to just using your existing business name. For example, the Collin Street Bakery in Corsicana, Texas, sells fruitcakes and has for many years—but when it came time to go online, the owners chose fruitcake.com as their domain name.
Still another option is to use only part of your business name, or an abbreviated form of it, as your domain name. (You're limited to 26 characters total, remember.) For example, Turners Outdoorsman, a retail sporting goods store, uses turners.com; Motley Fool (investment advice) uses fool.com, and Kelley Blue Book (wholesale and retail prices for used cars) is kbb.com. AskJeeves, a well-known search engine, uses ask.com. Short domain names are generally preferable to long ones, because many Internet users type the domain names into their browsers rather than relying on their list of favorite or bookmarked sites, portals (Yahoo!, AOL), or special interest sites that offer collections of links for parents, seniors, investors or other groups.
Of course, you may want to use another name altogether (like the bakery that chose fruitcake.com), especially if your business name is long. For instance, a well-known bookstore chain in Northern California called A Clean Well-Lighted Place for Books uses bookstore.com as its domain name. And Finer Times Market Place, an antique dealer, uses classicwatch.com.
As mentioned, generic domain names make weak trademarks because they merely describe the goods or services offered on the website (for example, healthanswers.com, drugstore.com, coffee.com), but excellent domain names because they work to get people to the website. So, depending on how well known your existing business name is, it may make sense to use two names. Create a new and descriptive domain name, and use your existing business name both as a second domain name and to sell goods or services on the website itself. The rest of this chapter gives more tips on choosing a good name.
C. Generic Names
A generic term can make a great domain name, because lots of people are likely to find your site. That's why domain names such as wine.com, furniture.com, pets.com and books.com were snapped up long ago.
As a general rule, generic domain names work best when you can use the actual term without modifiers or additional syllables. For instance, cars.com, drugs.com or coffee.com are the strongest and best uses of these generic terms. Domain names like fastcars.com, coffeebeans.com or bestdrugs.com aren't going to bring as many people to your site as the bare term would, but they're still considered generic for trademark purposes, meaning you get the worst of both worlds—an ineffective domain name and no trademark protection, either. If someone has got there ahead of you and is already using a key term by itself, consider adopting a classically distinctive domain name—that is, a name that is coined, arbitrary, fanciful, suggestive or flat-out clever. (See Section E, below.)
If you're considering a generic domain name (and someone else hasn't grabbed it yet), think it over before you decide to go with that name alone. As mentioned, having a generic name can certainly make it easier for people to find you on the Web. But because the name is generic, you probably will not have any trademark protection, and the U.S. Patent and Trademark Office probably won't register it. If you want to register your domain name as a national trademark, it must be distinctive enough to distinguish your product or service from others in the marketplace. For example, if a business names its new soft drink "Cola" and its website cola.com, it won't be able to register "cola" as a trademark. That's because "cola" describes a group of carbonated soft drinks with cola flavoring; it could refer to any of several brands of colas. But add "Shasta" to "Cola," and shastacola.com qualifies as a trademark because it specifies one particular brand of cola on the market. Other examples of terms that have always been generic are lite beer, super glue, softsoap, matchbox cars and supermarket.
As a general rule, generic domain names work best when you can use the actual term without modifiers or additional syllables. For instance, cars.com, drugs.com or coffee.com are the strongest and best uses of these generic terms. Domain names like fastcars.com, coffeebeans.com or bestdrugs.com aren't going to bring as many people to your site as the bare term would, but they're still considered generic for trademark purposes, meaning you get the worst of both worlds—an ineffective domain name and no trademark protection, either. If someone has got there ahead of you and is already using a key term by itself, consider adopting a classically distinctive domain name—that is, a name that is coined, arbitrary, fanciful, suggestive or flat-out clever. (See Section E, below.)
If you're considering a generic domain name (and someone else hasn't grabbed it yet), think it over before you decide to go with that name alone. As mentioned, having a generic name can certainly make it easier for people to find you on the Web. But because the name is generic, you probably will not have any trademark protection, and the U.S. Patent and Trademark Office probably won't register it. If you want to register your domain name as a national trademark, it must be distinctive enough to distinguish your product or service from others in the marketplace. For example, if a business names its new soft drink "Cola" and its website cola.com, it won't be able to register "cola" as a trademark. That's because "cola" describes a group of carbonated soft drinks with cola flavoring; it could refer to any of several brands of colas. But add "Shasta" to "Cola," and shastacola.com qualifies as a trademark because it specifies one particular brand of cola on the market. Other examples of terms that have always been generic are lite beer, super glue, softsoap, matchbox cars and supermarket.
D. Ordinary or Common Names
Many excellent domain names are made up of ordinary words. Consider taxprophet.com. Nothing remarkable about either tax or prophet, but put them together and you have a name with considerable cachet. Another example, Webvan.com, is the website of a grocery delivery service. There is nothing unusual about the words, but their combination is clever because it makes you wonder what is being delivered and piques your curiosity.
But what about trademark protection for a name consisting of ordinary terms? Here are the basic rules:
•If the overall name is distinctive, it will be protected as a trademark no matter how many ordinary terms are used.
•You cannot claim ownership to the ordinary terms themselves, but only to the overall name. For example, the owner of howstuffworks.com won't own "how" or "stuff" or "works," but will own the entire name.
•If the ordinary terms are memorable in the context of the product or service (for instance, Apple in the context of computers), the name will be considered distinctive. Common terms that consumers have come, over time, to associate with the underlying product or service will also be considered distinctive—for example, bestbuy.com for retail electronic products.
1. The General Rule: Little Legal Protection
On a scale of one to ten for trademark protection, generic names rate a zero, while distinctive names are a ten. In between are all sorts of names that aren't usually distinctive by themselves, but aren't generic either. This "ordinary names" category includes:
•names that use common terms in a standard arrangement—for example, healthanswers.com for, you guessed it, online health information
•place names such as DowntownNews.com
•personal names—for example, www.troweprice.com for T. Rowe Price investment funds; castlelaw.com for the Castleman Law Firm
•words that describe the product or service, such as i-courthouse.com for an online court that resolves disputes and allows Web surfers to serve as jurors; stampfinders.com, a full-service exchange for stamp collectors; and cleanswell.com for a website that sells household cleaners, and
•words of praise, such as bestpetshop.com (unless it becomes distinctive over time, as in bestbuys.com).
Misspellings or alternative spellings (such as "lite") cannot make an ordinary term ("light") distinctive. The same is true for common foreign language equivalents, like "le" for "the" and "casa" for "house." As a result, bestpetshop.com predictably will get little legal protection as a trademark. By contrast, a fanciful domain name like petopia.com is distinctive and easily protected as a trademark.
2. Protection If the Name Becomes Well Known
If an ordinary name becomes associated in the public mind with a product or service, the name can become a distinctive and legally protectible trademark. This is called the "secondary meaning" rule. Many famous and effective trademarks, like McDonald's or The Yellow Pages, originally consisted of ordinary terms that, over time, became widely recognized as product and service identifiers and so were transformed into strong marks. From its humble beginning as an ordinary mark, McDonald's has turned into one of the strongest marks in the world.
Similarly, when it first hit the market, the name Ben & Jerry's for a brand of ice cream was not distinctive and not entitled to much protection. However, as the Ben & Jerry's company advertised its products and as the products became well known (actually, adored) among the nation's ice cream buffs, the Ben & Jerry's trademark grew in distinctiveness. Now, the mark is highly distinctive as a brand of upscale ice cream—and the company's website is named, of course, benandjerrys.com. Other examples include schwab.com for Charles Schwab, Christies.com for auctions, sportingnews.com for the well-known sports periodical, and etrade.com for online stock trading.
Using a mark that can't be protected until it has acquired a secondary meaning can present a serious problem to your small business. You must accept the fact that the mark will be weak, and subject to possible use by others, until its reputation has been built up. If you can spend a lot of money to promote the mark when it's first used, you may be able to speed up the process of public recognition.
But what about trademark protection for a name consisting of ordinary terms? Here are the basic rules:
•If the overall name is distinctive, it will be protected as a trademark no matter how many ordinary terms are used.
•You cannot claim ownership to the ordinary terms themselves, but only to the overall name. For example, the owner of howstuffworks.com won't own "how" or "stuff" or "works," but will own the entire name.
•If the ordinary terms are memorable in the context of the product or service (for instance, Apple in the context of computers), the name will be considered distinctive. Common terms that consumers have come, over time, to associate with the underlying product or service will also be considered distinctive—for example, bestbuy.com for retail electronic products.
1. The General Rule: Little Legal Protection
On a scale of one to ten for trademark protection, generic names rate a zero, while distinctive names are a ten. In between are all sorts of names that aren't usually distinctive by themselves, but aren't generic either. This "ordinary names" category includes:
•names that use common terms in a standard arrangement—for example, healthanswers.com for, you guessed it, online health information
•place names such as DowntownNews.com
•personal names—for example, www.troweprice.com for T. Rowe Price investment funds; castlelaw.com for the Castleman Law Firm
•words that describe the product or service, such as i-courthouse.com for an online court that resolves disputes and allows Web surfers to serve as jurors; stampfinders.com, a full-service exchange for stamp collectors; and cleanswell.com for a website that sells household cleaners, and
•words of praise, such as bestpetshop.com (unless it becomes distinctive over time, as in bestbuys.com).
Misspellings or alternative spellings (such as "lite") cannot make an ordinary term ("light") distinctive. The same is true for common foreign language equivalents, like "le" for "the" and "casa" for "house." As a result, bestpetshop.com predictably will get little legal protection as a trademark. By contrast, a fanciful domain name like petopia.com is distinctive and easily protected as a trademark.
2. Protection If the Name Becomes Well Known
If an ordinary name becomes associated in the public mind with a product or service, the name can become a distinctive and legally protectible trademark. This is called the "secondary meaning" rule. Many famous and effective trademarks, like McDonald's or The Yellow Pages, originally consisted of ordinary terms that, over time, became widely recognized as product and service identifiers and so were transformed into strong marks. From its humble beginning as an ordinary mark, McDonald's has turned into one of the strongest marks in the world.
Similarly, when it first hit the market, the name Ben & Jerry's for a brand of ice cream was not distinctive and not entitled to much protection. However, as the Ben & Jerry's company advertised its products and as the products became well known (actually, adored) among the nation's ice cream buffs, the Ben & Jerry's trademark grew in distinctiveness. Now, the mark is highly distinctive as a brand of upscale ice cream—and the company's website is named, of course, benandjerrys.com. Other examples include schwab.com for Charles Schwab, Christies.com for auctions, sportingnews.com for the well-known sports periodical, and etrade.com for online stock trading.
Using a mark that can't be protected until it has acquired a secondary meaning can present a serious problem to your small business. You must accept the fact that the mark will be weak, and subject to possible use by others, until its reputation has been built up. If you can spend a lot of money to promote the mark when it's first used, you may be able to speed up the process of public recognition.
E. Distinctive Names
Distinctive, memorable domain names can make a strong impression on customers and are legally strong trademarks, easier to protect against use by others than are generic or ordinary names. They make customers think, "That's clever," or "Gee, I wonder what that means?" A product or service name can be distinctive for a number of reasons, including:
•The name is coined (made up)—for example, flooz.com, datek.comor multex.com.
•The combination of words and letters in the name is so creative that no one else has come up with it—for example, think360.com for services using cutting-edge three-dimensional photographic techniques.
•The name carries a clever double meaning—for example, google.com is an online search site; google is a word used by mathematicians to describe numbers beyond the trillion range. Another example: Pangea, a bioinformation company, uses doubletwist.com for its domain name, suggesting the famous double-helix structure of DNA.
•Certain words in the name are completely arbitrary in the context of the underlying product or service, as in online retailer Amazon.com; rhino.com, the website of Rhino Records; fool.com, the site for the Motley Fool investment advice firm and dogpile.com for search services.
•The name as a whole cleverly suggests the product without describing it, as in lendingtree.com for loans, hungryminds.com for online education, magicaldesk.com for secretarial services, medscape.com for health services and bottomdollar.com for a shopping site.
•The name is coined (made up)—for example, flooz.com, datek.comor multex.com.
•The combination of words and letters in the name is so creative that no one else has come up with it—for example, think360.com for services using cutting-edge three-dimensional photographic techniques.
•The name carries a clever double meaning—for example, google.com is an online search site; google is a word used by mathematicians to describe numbers beyond the trillion range. Another example: Pangea, a bioinformation company, uses doubletwist.com for its domain name, suggesting the famous double-helix structure of DNA.
•Certain words in the name are completely arbitrary in the context of the underlying product or service, as in online retailer Amazon.com; rhino.com, the website of Rhino Records; fool.com, the site for the Motley Fool investment advice firm and dogpile.com for search services.
•The name as a whole cleverly suggests the product without describing it, as in lendingtree.com for loans, hungryminds.com for online education, magicaldesk.com for secretarial services, medscape.com for health services and bottomdollar.com for a shopping site.
Saturday, December 5, 2009
F. Creating a Distinctive Domain Name
George Eastman, the founder of Kodak and a man with an eye for a good trademark, could have been talking about domain names when he suggested that trademarks should:
•be short
•be vigorous
•be easily spelled, and
•mean nothing. Some other good advice is to make your domain name:
•pronounceable
•memorable, and
•legally available (see Chapter 5).
•be short
•be vigorous
•be easily spelled, and
•mean nothing. Some other good advice is to make your domain name:
•pronounceable
•memorable, and
•legally available (see Chapter 5).
The key to creating a distinctive domain name is cleverness. Coined words such as Exxon are the ultimate in clever because they are created from thin air. But you don't need to make up new words to have a distinctive name. As we have seen, distinctive names often consist of ordinary words used creatively and in an unusual context or words that evoke fanciful associations. You may also want to use ordinary words that indirectly suggest what the underlying product or service is, without describing it outright.
While it may seem that all the good names have been taken, there is in fact a large supply. But like diamonds, they usually aren't just lying on the ground for the taking; a little mining, cutting and polishing may be required to find them and make them shine. Some possible sources:
•new combinations of existing words such as ubid.com for auctions, smartmoney.com for personal finance calculators, buyitnow.com for a retail site
•combinations of word roots, like intelihealth.com for health services, bibliofind.com or alibris.com for book finding services, travelocity.com for travel services, invesco.com for investment services
•distinctive foreign words such as Sirocco.com or Soleil.com
•abandoned names that are no longer in use, but that were once famous. They may bring a certain cachet to your product or service if their image corresponds to the one you want to project. If you do discover a name you know was in use at one time, find out whether or not it is now available for your use by doing the sort of search described in Chapter 6.
Finding Unclaimed Marks
One online subscription service claims to have an inside track to domain names that were not renewed after their two-year registration expired. The service provides a list of these recently expired registrations on a weekly basis for a $20 subscription fee. While we don't endorse this service or provide any guarantees, such a list might provide a fruitful source of domain name ideaYou can reach the service at www.unclaimeddomains.com.
If you do decide to use one of the names on this list, make sure that the name isn't still being used as a trademark on or off the Web. As with other domain name choices you may make, you should definitely subject your choice to a trademark search, as described in Chapter 6.
1. Coined Words
The best way to make a mark distinctive is to make it up. Some examples include chumbo.com (an online software store), kagi.com (a payment processing service for e-commerce businesses) and pandesic.com (an e-commerce company). The keys to a coined domain name are making it easy to spell and appealing to both eye and ear, or at least suitable to the image you want to project for your product or service. To avoid coined words that may evoke unintended images (for example, runslo.com for software that is supposed to speed up your Internet access), run your choices by a variety of people and note their responses to the sound and appearance.
Wholly new, made-up words have no meaning and probably not even any connotation, other than the ones you will create with your marketing activities. That means they require extensive, often expensive, marketing efforts to get established as product or service identifiers in the first place. Without that, your domain name won't mean anything to the general public. That's a major drawback for a small business with limited capital.
Opting for a coined word has a second drawback. New combinations that sound and look good—that is, ones that are marketable and not already in use—are becoming harder to develop. Despite our rich Celtic, Anglo-Saxon, Norman and Latin linguistic heritage, with over 200,000 new trademarks being registered each year, the well of coinable words is fast being drained.
2. Names That Suggest, But Don't Describe
In general, marketing folks favor suggestive names because they evoke an image or idea that customers are likely to associate with the product or service being marketed. A name is usually considered suggestive when you need to take at least one more mental step to figure out what is being suggested. Here are some examples:
•ask.com, the domain name for the Ask Jeeves search engine, effective because it suggests answers, just what you want a search engine to do
•peapods.com, the domain name for the Pea Pods baby things site, suggests maternity things
•peapod.com, a website featuring online grocery ordering
•Salon.com, an online magazine, suggests a place for the exchange of sophisticated commentary
•eHow.com, information made available in a crisp "how to" format
•Travelocity.com, a travel services website, suggests travel and speed
•nextMonet.com, an online contemporary art gallery that suggests undiscovered great artists
•Gazoontite.com (for allergy information and supplies) that suggests the ritualistic and widespread use of the German "Gesundheit!" (health) when someone sneezes
•Getsmart.com, a debt consolidation and loan service, suggests the quality of savvy, something that folks who have debt problems may aspire to, and
•wingspanbank.com (a national online bank) suggests a far-flung presence, something innovative in the banking industry.
Although suggestive names may require some marketing to become broadly identified with a product, they are usually easier to promote than coined names because they already connote something you want to associate with your product or service. Some name consultants argue that suggestive names are the most useful because the images they evoke make them very effective marketing tools. But it may take lots of thought to come up with one that's appropriately evocative, suits your customer base and hasn't been taken. Again, test your ideas out on a number of people to see if they get the message you hope to send.
3. Fanciful Words
Fanciful names are fun to invent because you can use any term, or combination of terms, that do not in fact describe your service or product in any way. The trick is to think up a term that is interesting, memorable and somehow appropriate, without literally describing some aspect of your service or product. For example, Yahoo.com and ragingbull.com (stock market and investment information site) are both fanciful names that would be easy to protect as trademarks.
Clearly, consumer responses to these types of names are subjective and intuitive. If you create a fanciful or arbitrary mark, try to consider all the possible evocations that the name may have—and make the most of them.
4. Arbitrary Words
Words that are descriptive or ordinary when associated with one product or service can be very strong for another. For example, Apple.com is distinctive and legally strong as a trademark because apples have nothing to do with computers, but Swingsets.com for a site that sells children's play equipment is weak because it literally describes the product. Similarly, Facets.com is a distinctive name for an online clothing store, but would be mundane, ordinary and non-distinctive as the name for an online gem store.
5. Common Terms in Uncommon Arrangements
Ordinary words, in unusual arrangements, can make distinctive names. For example, Magicaldesk.com has weak components—magical and desk are both common terms, but combine them for secretarial services, and the entire name becomes more distinctive and therefore more easily protected.
When evaluating a phrase to see whether it's a strong or weak trademark, it is the overall impression that counts. The fact that some of the elements are ordinary won't matter if the phrase as a whole has an original ring to it. For example, Speedy Turtle Delivery Service is memorable for the contrast of speed and turtle. This makes it distinctive, despite the fact that Speedy Delivery Service without the Turtle would be purely descriptive and so a weak trademark. Especially if you shortened the entire business name to speedyturtle.com, you would have a very distinctive domain name.
G. Names to Avoid
There are two categories of names to avoid when selecting your domain name:
•Names that the PTO will refuse to register as trademarks, and
•Names that will be in legal conflict with existing trademarks.
1. Names You Can't Register As Trademarks
If you want to protect your choice of domain name as a trademark, you'll want to register it with the United States Patent and Trademark Office. (Chapter 8 tells you how.) The PTO will not register any of the following:
•Names that contain immoral, deceptive or scandalous matter (essentially, four-letter words)
•Names that disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs or national symbols
•Names identifying a particular living individual (unless his or her consent is obtained) or a deceased president of the United States
•Names that have been taken by an organization that has been granted the exclusive right by statute to use the name, such the Boy Scouts and U.S. Olympic Committee
•Names that are misleading or just plain false
•Names that are primarily a geographic name or a surname, unless they have acquired a "secondary meaning," as has, for example, schwab.com.
2. Names That Will Conflict With Existing Trademarks
You should always keep an eye out for possible legal conflicts when choosing your domain name. Even if you already have a business and have taken the necessary steps to register your name with the county clerk (for sole proprietorships and partnerships) or Secretary of State (for corporations or limited liability companies), you may violate someone's trademark by making your business name your domain name. Thousands of business owners have been stunned to discover that they can't use their chosen business name without running afoul of another business's trademark rights.
As a general rule, avoid domain names that are:
•Close to an existing domain name that is both distinctive and used on a competing website.
•The same as or very similar to a famous commercial name used online (Amazon) or off (McDonald's, Disney). Truly famous names get special protection even if use by someone else wouldn't confuse customers. Under laws known as "dilution" statutes, courts can stop any use of a famous name that is intended to trade off the strength of the name, or that has the effect of tarnishing the trademark's reputation for quality.
•The same as or confusingly similar to the name of a famous living person such as Michael Jordan, Julia Roberts or Hillary Clinton.
In addition, if all of the following four statements are true, you run at least some risk that you'll end up on the wrong end of a dispute over your domain name:
•Another business is already using your proposed domain name as its trademark.
•The other business's mark is distinctive, even if marginally.
•The other business started using the mark in actual commerce before you started using your proposed domain name, and
•Either the proposed domain name itself, or the products or services to be sold on your website, would create a likelihood of customer confusion.
•Names that the PTO will refuse to register as trademarks, and
•Names that will be in legal conflict with existing trademarks.
1. Names You Can't Register As Trademarks
If you want to protect your choice of domain name as a trademark, you'll want to register it with the United States Patent and Trademark Office. (Chapter 8 tells you how.) The PTO will not register any of the following:
•Names that contain immoral, deceptive or scandalous matter (essentially, four-letter words)
•Names that disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs or national symbols
•Names identifying a particular living individual (unless his or her consent is obtained) or a deceased president of the United States
•Names that have been taken by an organization that has been granted the exclusive right by statute to use the name, such the Boy Scouts and U.S. Olympic Committee
•Names that are misleading or just plain false
•Names that are primarily a geographic name or a surname, unless they have acquired a "secondary meaning," as has, for example, schwab.com.
2. Names That Will Conflict With Existing Trademarks
You should always keep an eye out for possible legal conflicts when choosing your domain name. Even if you already have a business and have taken the necessary steps to register your name with the county clerk (for sole proprietorships and partnerships) or Secretary of State (for corporations or limited liability companies), you may violate someone's trademark by making your business name your domain name. Thousands of business owners have been stunned to discover that they can't use their chosen business name without running afoul of another business's trademark rights.
As a general rule, avoid domain names that are:
•Close to an existing domain name that is both distinctive and used on a competing website.
•The same as or very similar to a famous commercial name used online (Amazon) or off (McDonald's, Disney). Truly famous names get special protection even if use by someone else wouldn't confuse customers. Under laws known as "dilution" statutes, courts can stop any use of a famous name that is intended to trade off the strength of the name, or that has the effect of tarnishing the trademark's reputation for quality.
•The same as or confusingly similar to the name of a famous living person such as Michael Jordan, Julia Roberts or Hillary Clinton.
In addition, if all of the following four statements are true, you run at least some risk that you'll end up on the wrong end of a dispute over your domain name:
•Another business is already using your proposed domain name as its trademark.
•The other business's mark is distinctive, even if marginally.
•The other business started using the mark in actual commerce before you started using your proposed domain name, and
•Either the proposed domain name itself, or the products or services to be sold on your website, would create a likelihood of customer confusion.
Chapter 5: What to Do If Your Domain Name Is Already Taken
The Information on chapter 5 is shown below.
Overview
Has the domain name you want already been grabbed by another business? Don't worry; you have options.
A. Use .net or .org
If you are like most businesses, you want .com at the end of your domain name. However, many .com names are unavailable, although the same choices may be available with .net or .org.
The availability of .net or .org is probably small consolation to you. E-commerce businesses often refuse to settle for .net or .org because .com has become, as it was intended to, uniquely associated with commercial activity. If you are one of these .com holdouts, you'll just need to keep plugging away with proposed names until a .com version is available.
If, however, your intended activity involves fostering access to the Internet (perhaps as an Internet service provider) or building a real or virtual organization of some type (as a nonprofit organization, for example), .net or .org may be just fine. In some cases, it may even be beneficial. Take the nonprofit national public radio and television entity, the Public Broadcasting Service (PBS). PBS, which derives its credibility and reputation for independent programming and news reporting from its nonprofit status, chose www.pbs.org for its domain name. By staying away from .com, PBS senthe message that the content on its website is non-commercial, which is appealing to those who support it.
Using .net or .org doesn't necessarily shield you from claims of trademark infringement. For instance, Amazon.com recently sued Amazon.gr (.gr is for Greece) for trademark infringement. However, a federal court has ruled that a domain name that ends with .net conveys a non- commercial purpose, which may reduce the likelihood of customer confusion between a .net site and a .com site. (If you want to read the judge's decision, you can find that case, Avery-Dennison v. Sumpton, at http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=9855810. See Section D, below for more on trademark infringement.)
New Choices Coming Soon
In the not-too-distant future, there should be a greater choice of domain names, including:
.stor, for e-commerce sites
.firm, for business or professional sites
web, for Web-oriented sites
.arts, for art-related sites
.rec, for recreational sites
info, for sites providing information services, and
.nom, for sites supported by individuals.
The availability of .net or .org is probably small consolation to you. E-commerce businesses often refuse to settle for .net or .org because .com has become, as it was intended to, uniquely associated with commercial activity. If you are one of these .com holdouts, you'll just need to keep plugging away with proposed names until a .com version is available.
If, however, your intended activity involves fostering access to the Internet (perhaps as an Internet service provider) or building a real or virtual organization of some type (as a nonprofit organization, for example), .net or .org may be just fine. In some cases, it may even be beneficial. Take the nonprofit national public radio and television entity, the Public Broadcasting Service (PBS). PBS, which derives its credibility and reputation for independent programming and news reporting from its nonprofit status, chose www.pbs.org for its domain name. By staying away from .com, PBS senthe message that the content on its website is non-commercial, which is appealing to those who support it.
Using .net or .org doesn't necessarily shield you from claims of trademark infringement. For instance, Amazon.com recently sued Amazon.gr (.gr is for Greece) for trademark infringement. However, a federal court has ruled that a domain name that ends with .net conveys a non- commercial purpose, which may reduce the likelihood of customer confusion between a .net site and a .com site. (If you want to read the judge's decision, you can find that case, Avery-Dennison v. Sumpton, at http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=9855810. See Section D, below for more on trademark infringement.)
New Choices Coming Soon
In the not-too-distant future, there should be a greater choice of domain names, including:
.stor, for e-commerce sites
.firm, for business or professional sites
web, for Web-oriented sites
.arts, for art-related sites
.rec, for recreational sites
info, for sites providing information services, and
.nom, for sites supported by individuals.
B. Change the Name Slightly
A domain name is reported as not available only if the exact name is already taken. For instance, if an availability search tells you that madprophet.com is already taken, you may find that "mad- prophet.com" or "madprophets.com" is available. So, if you are not wed to the exact form of your first proposed domain name, you can experiment with minor variations until you find an acceptable name that is available.
The fact that a slightly different name is available doesn't mean that you can or should use it, however. Using a domain name very similar to an existing one may result in trademark infringement—the violation of someone's trademark rights. If you're found to have infringed someone's trademark, a court could order you to stop using the name and pay money damages to the other domain name owner. The result would depend on whether:
•the name is actually being used on a commercial website, or
•the close similarity in names would be likely to confuse potential customers.
For example, a potential customer who sets out to access the original madprophet site but who mistakenly types in a dash will end up at your site. This may be a temporary diversion, or it may represent the loss of the other site's customer to you. Especially if you are offering competing goods or services, you will have created the exact type of customer confusion that the trademark laws have been designed to protect against.
If you're thinking about choosing a domain name that is only a slight alteration of another site's domain name, read Chapter 7 on customer confusion first.
The fact that a slightly different name is available doesn't mean that you can or should use it, however. Using a domain name very similar to an existing one may result in trademark infringement—the violation of someone's trademark rights. If you're found to have infringed someone's trademark, a court could order you to stop using the name and pay money damages to the other domain name owner. The result would depend on whether:
•the name is actually being used on a commercial website, or
•the close similarity in names would be likely to confuse potential customers.
For example, a potential customer who sets out to access the original madprophet site but who mistakenly types in a dash will end up at your site. This may be a temporary diversion, or it may represent the loss of the other site's customer to you. Especially if you are offering competing goods or services, you will have created the exact type of customer confusion that the trademark laws have been designed to protect against.
If you're thinking about choosing a domain name that is only a slight alteration of another site's domain name, read Chapter 7 on customer confusion first.
C. Buy the Name
Domain names are bought, sold and auctioned like any other property. If the domain name you want is being used on an actively maintained commercial website, chances are slim the owner will sell it to you. However, if the name has been reserved but isn't being used, you may be able to get it for a price you can afford.
How much is a domain name worth? Most domain names don't sell for that much (though some exceptions are listed in "Big Sellers," below). At GreatDomains.com, the leading online domain name brokerage house, the average offer price is around $32,000, and the average selling price is $14,500.
That website provides an interesting discussion of how it ranks and appraises the value of the domain names it deals in. For a detailed discussion of how this particular brokerage appraises domain names, visit its website at http://www.greatdomains.com/. The most important factors are:
•the number of characters (the shorter the better)
•the market potential of the business to which the domain name is attached (for example, car.com is more valuable than camping.com because it reaches a broader market); and
•the use of .com, which is better than .net or .org for a commercial enterprise.
You can buy a domain name in a variety of ways. You can look in online classifieds, contact the owner directly and make an offer, make a bid on an auction website (ebay.com, for example) or go through an online domain name broker such as GreatDomains.com.
Big Sellers
Prices of some recent big-money transfers of domain names:
business.com $7.5 million
wallstreet.com $1.03 million
computer.com $500,000
question.com $175,000
internet.com $100,000
drugs.com $823,000
ForSaleByOwner.com If you are buying or selling a domain name through an online broker (like GreatDomains.com), the broker will likely supply all the necessary paperwork to legally transfer the domain name. If you don't use a broker, you or the other party to the deal must supply the purchase agreement. If it falls on you to come up with an agreement, consider adapting the sample agreement below.
If you use an online broker, here's how your transaction might work. First, you go to the broker's website. If you find a domain name you want, you submit an offer to the broker, who forwards your offer to the seller. The broker then informs you whether your offer has been accepted, rejected or there is a counteroffer. If your offer has been accepted, the broker mails you a purchase contract and detailed escrow instructions to sign. You pay no broker fees. The seller pays all the fees.
Beware of Cybersquatters
If the domain name registrant appears eager to sell the name to you and the name is the same or similar to a mark you're already using, take a moment to reflect. It's now illegal, under federal law, to traffic in domain names in this manner. See Section D for a more detailed description of how the law works.
How much is a domain name worth? Most domain names don't sell for that much (though some exceptions are listed in "Big Sellers," below). At GreatDomains.com, the leading online domain name brokerage house, the average offer price is around $32,000, and the average selling price is $14,500.
That website provides an interesting discussion of how it ranks and appraises the value of the domain names it deals in. For a detailed discussion of how this particular brokerage appraises domain names, visit its website at http://www.greatdomains.com/. The most important factors are:
•the number of characters (the shorter the better)
•the market potential of the business to which the domain name is attached (for example, car.com is more valuable than camping.com because it reaches a broader market); and
•the use of .com, which is better than .net or .org for a commercial enterprise.
You can buy a domain name in a variety of ways. You can look in online classifieds, contact the owner directly and make an offer, make a bid on an auction website (ebay.com, for example) or go through an online domain name broker such as GreatDomains.com.
Big Sellers
Prices of some recent big-money transfers of domain names:
business.com $7.5 million
wallstreet.com $1.03 million
computer.com $500,000
question.com $175,000
internet.com $100,000
drugs.com $823,000
ForSaleByOwner.com If you are buying or selling a domain name through an online broker (like GreatDomains.com), the broker will likely supply all the necessary paperwork to legally transfer the domain name. If you don't use a broker, you or the other party to the deal must supply the purchase agreement. If it falls on you to come up with an agreement, consider adapting the sample agreement below.
If you use an online broker, here's how your transaction might work. First, you go to the broker's website. If you find a domain name you want, you submit an offer to the broker, who forwards your offer to the seller. The broker then informs you whether your offer has been accepted, rejected or there is a counteroffer. If your offer has been accepted, the broker mails you a purchase contract and detailed escrow instructions to sign. You pay no broker fees. The seller pays all the fees.
Beware of Cybersquatters
If the domain name registrant appears eager to sell the name to you and the name is the same or similar to a mark you're already using, take a moment to reflect. It's now illegal, under federal law, to traffic in domain names in this manner. See Section D for a more detailed description of how the law works.
D. Assert Your Rights As Senior Trademark User
Read the rest of this chapter only if you:
•are already in business,
•use a distinctive name to identify your product or service, and
•want to use that name as your domain name.
If you already use your proposed domain name to market products or services, you may have the upper hand in a dispute with someone who's using the domain name. Under trademark law, the firstperson to use a mark in commerce is considered the owner (more on this in Chapter 3, Section B). So if you used the name to market your products or services before the domain name registrant started using its domain name, you can prevent another business from using the same mark if:
•the mark is nationally famous (laws against trademark dilution protect famous marks from use by others, even if there is no customer confusion—see Chapter 4, Section G2), or
•the use creates a likelihood of customer confusion (discussed in some detail in Chapter 7), or
•the other user is a "cybersquatter" under federal law.
Sample Domain Name Transfer Agreement
Domain Name Transfer Agreement
(Buyer)
and (Seller)
agree as follows:
1.Seller assigns to Buyer all right, title and interest worldwide to the
[Domain Name] domain name, together with any goodwill associated with it.
2.Seller represents that Seller has full power to enter into and perform this Agreement.
3.Seller will promptly apply to Network Solutions, Inc. (NSI) to transfer ownership and management of [Domain Name] to Buyer under current NSI procedures for modifying a domain record. Specifically, Seller will instruct NSI to change the billing name, technical contract and administrative contact for [Domain Names] to [new billing name, technical contact and administrative contact information] . Seller will provide the information and email messages, and execute documents, necessary to accomplish the transfer of the domain name.
4.Buyer will pay Seller $ upon confirmation that NSI has changed the billing name, technical contact, and administrative contact as specified in Paragraph 2. A current printout of a WHOIS query provided to Buyer by Seller will be sufficient evidence of the domain name transfer. Buyer will issue a check for the full amount made out to , and send it via overnight delivery service to Seller at the address below.
5.As a couresy, Buyer will attempt to forward to Seller from time to time any misdirected email messages received through the [Domain Name] domain name. Seller recognizes that Buyer's hardware and the Internet itself may not always function perfectly, and that delays might be involved in forwarding the email messages. In no event will Buyer be liable for any lost profits, lost revenue, lost data or any form of special, incidental, indirect, consequential or punitive damages of any kind, whether based on breach of contract or warranty, tort (including negligence), product liability or otherwise ( wheather or not foreseeable), even if informed in advance of the possibility of such damages, for failure to deliver or timely deliver and email messages.
6.This Agreement will be governed by the laws of the State of [Buyer's state] .
7.If any provision of this Agreement is held by a tribunal od competent jurisdiction to be contrary to law, the remaining provisions will remain in effect.
8.This Agreement constitutes the entire agreement between the parties with the respect to the [Domain Name] domain name. This Agreement may not be changed in any respect except in writing duly executed by authorized representatives of each of the parties.
Seller's Full Name Buyer's Full Name
Seller's Signature Buyer's Signature
Date Date
Address Address
1. Choosing a Strategy
If you are a trademark holder and want to challenge the use of a domain name, you will first need to decide on a strategy for going after the registrant. You have three choices:
•Use the dispute resolution service offered by ICANN. ICANN, the international nonprofit organization now in charge of domain name registrations worldwide, recently implemented a process called the Uniform Domain Name Dispute Resolution Policy, or UDRP. This administrative procedure works only for cybersquatting disputes—that is, when someone has registered your name in a bad-faith attempt to profit from your trademark. It is potentially less expensive (about $1,000 to $2,500 in fees) and quicker than filing a lawsuit (just 57 days to resolution).
•File a trademark infringement lawsuit. If you win, the court will order the domain name holder to transfer the domain name to you, and may award you money damages as well. A lawsuit is always an option, whether or not you pursue ICANN's dispute resolution process. We discuss infringement lawsuits in Section 3, below.
•File a cybersquatting lawsuit. If you win, you can not only get the domain name you want, you may also win money damages from the cybersquatter.
Strategies for Going After Someone Using Your Trademark as a Domain Name
ICANN Dispute Trademark Cybersquatting
Resolution infrinqement Lawsuit
Procedure Lawsuit
Lawyer needed? No Yes Yes
Cost Approximately $10,000 and up $10,000 and up
$1,000 to $2,500
Time 57 days from date you Months if the case A month or two file your complaint settles, years if it goes to trial
Grounds for relief Bad-faith registration of Trademark Cybersquatting
your name infringment
Who can be Any domain name As a practical As a practical
registrant matter, only U.S. matter, only U.S.
registrants
What you may win The domain name you The domain name The domain name
want you want plus you want, plus
money damages money damages
for post-November
1999 activity
2. The ICANN Dispute Resolution Procedure
ICANN's new dispute resolution procedure applies to virtually all domain name registrants. (Before ICANN acted, NSI, which had a monopoly on domain name registrations in the United States, had its own dispute resolution system, which handled disputes between its domain name registrants and trademark holders.)
a. What You Must Prove to Win
To win your case in the ICANN procedure, you'll have to prove three things:
•The domain name at issue is identical or confusingly similar to a mark that you own, whether or not the mark has been registered as a trademark in the U.S. or abroad,
•The registrant has no rights or legitimate interests in the domain name, and
•The domain name was registered and/or is being used in bad faith.
You must prove similar things to prevail in a lawsuit based on the federal Anti-Cybersquatting Consumer Protection Act, discussed in Section 4, below. The Anti-Cybersquatting Act is, however, as a practical matter, enforceable in the United States alone. The ICANN procedure, on the other hand, can conveniently be used against domain name registrants outside of the U.S. as well.
Here's a look at each of these three elements in more detail.
Domain name's confusing similarity to your trademark. You must assert that you own the mark because you were the first to use it or because trademark registration has given you the right to its exclusive use. You must also state that the domain name really is confusingly similar to your mark. (If you need help understanding customer confusion, see Chapter 7.) If the domain name at issue is preventing you from using your mark as your own domain name, the "identical or confusingly similar" test will probably be satisfied.
Registrant's lack of rights or legitimate interests in the name. To prove this element, you must show three things:
•The registrant has never tried to use the domain name (or a similar one) in connection with legitimate commerce, on or off the Web;
•The registrant was never generally known by the domain name, even if the name wasn't used in commerce as a trademark; and
•The registrant isn't using the domain name in any legitimate way. A legitimate use would, for example, consist of use on a non-commercial website that engages in satire or criticism. But the use would not be legitimate if the registrant's actual intent is to divert consumers from your website or business location, or to tarnish your mark by lessening its reputation for quality.
Registrant's bad faith. This one is really the flip side of the second item. The registrant has acted in bad faith if you can show any of the following:
•The registrant acquired the domain name with the intent to sell it back to you or your business in particular, or to a competitor of yours, for profit. This wouldn't apply to those who acquire domain names with the intent to auction them off to the highest bidder later, because the plan was not directed specifically at you.
•The registrant has a pattern of acquiring domain names with the intent to block their use by legitimate trademark owners. That is, the registrant is a true cybersquatter. (See Section 4, below.)
•The registrant is a competitor who acquired the domain name primarily to disrupt your business
•The registrant is using the domain name to attract users to the website by creating customer confusion. (See Chapter 7.)
b. How the Process Works
Your first step is to choose a dispute resolution "provider," which is an organization approved by ICANN. So far, ICANN has approved just two providers. Each has its own supplemental rules for dispute resolution, so in addition to ICANN's procedural rules you must follow the provider's rules. You can check them out at the provider's website, listed below. These sites offer detailed discussions about how to navigate the process.
To begin your case, you send a complaint to the provider, setting out specific facts that prove the three elements discussed above. Check the provider's website for fee information. Who pays the fees and how much will vary depending on the circumstances and the provider.
After reviewing the complaint for completeness, the provider will send the registrant a copy of the complaint, along with directions on how the registrant can respond and within how much time. The domain name registrant can continue to use the name until the dispute is resolved.
The provider will usually issue a response based solely on the complaint and the response. Either party may go to court if the decision is not to their liking. However, if the decision is in your favor, you will get the domain name transferred to you unless the registrant promptly files a lawsuit to prevent it.
The ICANN procedure is still new, and there will no doubt be numerous changes to it; the rules may have changed by the time you read this book. Check out the resources listed below to get the most up-to-date rules.
Current Information About Dispute Resolution Procedures
ICANN:www.icann.org. Go there for the most current information about the new dispute resolution process.
DomainMagistrate.com:www.DomainMagistrate.com. This site is operated by Network Solutions, Inc., to help people figure out how to use the new domain name dispute resolution procedures.
Dispute Resolution Providers: ICANN has named two organizations, called providers, to help resolve domain name disputes: the World Intellectual Property Organization (WIPO):http://arbiter.wipo.int/domains and the National Arbitration Forum:www.arbforum.com/domains/.
3. A Trademark Infringement Lawsuit
As the senior user of a trademark, you can bring a trademark infringement lawsuit against the domain name owner if your trademark is distinctive and the use of the domain name creates a likelihood of customer confusion. As part of this suit, you can ask the court to require the owner of the domain name to transfer it to you and you may also be able to recover damages and attorney's fees. Of course, going to court is time-consuming and may cost you more than you'll recover from the defendant. You'll want to carefully weigh the possible benefits against the costs.
Things can get confusing if the trademark you've been using isn't exactly the same as your proposed domain name. If it's almost the same, trademark law lets you maintain ownership. But you can lose your seniority if there are significant differences. For instance, in one recent case, a company that owned the trademark "The Movie Buff's Movie Store" registered the domain name moviebuff.com. Another company, which had been using the actual mark "moviebuff" on a CD-ROM containing movie information, was prevented from using moviebuff.com as a domain name. The "Movie Buff's Movie Store" mark had been in use before the other company started using moviebuff on its CD-ROMs. Who was the senior user of the moviebuff trademark? The U.S. District Court ruled that the company using "The Movie Buff's Movie Store" was the senior user because it had used that name before the other company used moviebuff. But an appeals court reversed, ruling that "The Movie Buff's Movie Store" was an entirely different mark than moviebuff, and ordered the "Movie Buff's Movie Store" company to surrender the domain name to the moviebuff thcompany. (Brookfield v. West Coast Entertainment Corp., 174 F.3d 1036 (9 Cir. 1999). You can read this case at http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=9856918.)
TipTrademark: Legal Care for Your Business & Product Name, by Stephen Elias and Kate McGrath (Nolo), is a book that explains how rights to conflicting trademarks are resolved and what's typically involved in trademark infringement actions
Trademark Disputes: Who Wins, Who Loses & Why, by Stephen Elias, is a downloadable eGuide, available at www.nolo.com.
4. An Anti-Cybersquatting Lawsuit
If you own your name and find that someone or some business is holding it hostage as a domain name until you pay a large sum for it, you may be the victim of cybersquatting. You can sue to get your domain name—and possibly some money damages—under a 1999 federal law known as the Anti-Cybersquatting Consumer Protection Act. Because suits must be filed in federal court, you almost certainly will need to hire a lawyer.
Under the Act, cybersquatting means registering, trafficking in or using a domain name with bad-faith intent to profit from the goodwill of a mark belonging to someone else. It refers to the practice of buying up domain names reflecting the names of existing businesses with the intent of selling thnames for a profit back to the businesses when they go to put up their websites.
The Origins of Cybersquatting
The practice that's come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the World Wide Web. Some entrepreneurial souls registered the names of well-known companies as domain names, with the intent of selling the names back to the companies when they finally woke up. Panasonic, Fry's Electronics, Hertz and Avon were among the "victims" of cybersquatters. Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that nailing down domain names is a high priority.
a. Recognizing Cybersquatting
How do you know if a cybersquatter has your name? As a general rule, you should first see whether your proposed but unavailable domain name takes you to a legitimate website. Simply enter www. and the domain name in your browser.
If the domain name takes you to a website that appears to be functional and reasonably related in its subject matter to the domain name, you probably aren't facing a case of cybersquatting. However, you may have a case of trademark infringement, as described in Section 3, above.
But if your browser produces any of the following results, and you are a famous individual or are using your existing business name as your proposed domain name, you may have a case of cybersquatting on your hands:
•You get a "can't find server" message
•You get an "under construction" page, or
•You get a page that appears to have no relationship to the meaning of the domain name. For instance, if you type the well-known Nolo trademark WillMaker into your browser (www.willmaker.com), you get Shells' Ragtown Political Art Studio. (Yes, Nolo.com appears to have its own cybersquatter problems.)
Although each of these results suggests the possibility of cybersquatting, there may also be an innocent explanation for the lack of a functioning website, especially if the website is still under construction. It's very easy and inexpensive to register or reserve domain names but more difficult to put up the actual website. You can reserve a domain name for two years, so the fact that a website is not up, even months after the name was reserved or registered, does not necessarily mean that the registrant doesn't have perfectly legitimate plans to have a website in the future.
Before jumping to any conclusions about a proposed domain name that is not available, contact the registrant. (See Chapter 2, Section B, for how to do this.) Find out whether there is a reasonable explanation for the use of the name, or if the registrant is willing to sell you the name at a price you are willing to pay.
Sometimes paying the cybersquatter is the best choice. Even though Congress has provided a remedy against cybersquatting, it requires a federal court lawsuit and, almost by necessity, lawyers. It may be a lot cheaper and quicker for you to come to terms with a cybersquatter than to stand on your rights and invoke the power of the federal court with its attendant costs and delay. Although you may be able to recover your costs and attorney fees if you win, there is no guarantee; it's completely up to the judge.
b. What You Must Prove to Win
If somebody else has already registered your business name or other mark as a domain name, you can sue the registrant in federal court to have the domain name transferred to you. To win, you'll have to prove all of the following:
•The registrant had a bad-faith intent to profit from your mark (see section c, below),
•Your mark was distinctive at the time the domain name was first registered (see Chapter 4 for more on what makes a mark distinctive),
•The domain name is identical or confusingly similar to your mark, and
•Your mark qualifies for protection under federal trademark laws (see Chapter 8)—that is, you were the first to use the mark in commerce.
You don't have to show that customers are likely to be confused. (This is different from a trademark infringement lawsuit; see Section 2 above.) This means you can sue the domain name registrant even if the website sells products or services that are completely unrelated to yours.
c. Bad Faith
To win a lawsuit based on the Anti-Cybersquatting Act, you must show bad faith on the part of the domain name registrant. This will not be easy. There is no bad faith if the person who registered the name had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. If a cybersquatter is able to show a reason for registering the domain name other than to sell it back to the trademark owner, then the courts will allow him to continue.
If you can answer yes to any of the following questions, then there may be no bad faith:
•Does the domain name registrant have an arguable claim to the name because of the registrant's existing trademark rights? There may be concurring uses of the same name that are noninfringing, such as the use of the "Delta" trademark for both air travel and sink faucets. Similarly, the registration of the domain name "deltaforce.com" by a movie studio would not tend to indicate a bad-faith intent on the part of the registrant to trade on Delta Airlines' or Delta Faucets' trademarks.
•Does the domain name identify the registrant as an individual? A person is entitled to his or her own name, whether in business or on a website. Similarly, a person may bear a legitimate nickname that is identical or similar to a well-known trademark, such as in the well-publicized case of the parents who registered the domain name "pokey.org" for their young son who goes by that name.
•Has the registrant ever used the domain name in connection with the offering of goods or services? If the registrant has a commercially sensible reason for using the domain name (other, that is, than selling it back to you), there is probably not bad faith.
•Is the registrant legally using the mark on the website itself? It's legal to make noncommercial or fair uses of others' marks online, such as in comparative advertising, comment, criticism, parody or news reporting. The mere fact that the domain name is used for one of these purposes would not alone establish a lack of bad faith.
Congress has also provided us with some indicators of the bad faith necessary to prove a cybersquatting charge. If the answer to any of the following questions is yes, the court may be inclined to find that the registrant is acting in bad faith, or did so when the domain name registration was made.
•Is the registrant using the domain name to divert users from your site to another site where customer confusion is likely to result or your trademark's reputation for quality is harmed? In other words, is the domain name being used in a way that negatively affects your website or the value of your trademark?
•Has the registrant offered to sell the domain name to you without having ever legitimately used the domain name on a commercial website?
•Has the registrant provided false or misleading contact information to the domain name registry or failed to keep this information up to date?
•Has the registrant registered multiple names that are the same or confusingly similar to distinctive marks? In other words, is there an apparent pattern of cybersquatting?
•Is the mark in question famous or highly distinctive? The more distinctive or famous the mark, the more the court is likely to conclude that the registrant acted in bad faith.
It's the Facts That Count
In one of the first cases decided under the federal anti-cybersquatting law, a court ruled that a business that had used another business's trademark as a domain name had acted in bad faith and was a cybersquatter.
In 1985, Sportsman's Market (Sportman's) registered the trademark Sporty's, which it used on its aviation products catalog. Ten years later, Omega Engineering decided to sell aviation products and registered the domain name sportys.com. Nine months later, Omega created a wholly-owned subsidiary called "Sporty's Farms" for the alleged purpose of operating a Christmas tree farm, and sold the sportys.com domain name to it. Sportsman's learned of the registration, sued to obtain the domain name for its own use and won in U.S. District Court. Sporty's Farms appealed the trial court's decision.
During the appeal, Congress passed the Anti-Cybersquatting Act, and the appeals court applied it to this dispute. The court noted that the particular facts in this case didn't mesh well with the criteria set out in the Act for determining bad faith, a necessary ingredient for a successful cybersquatting charge. However, the court also noted that the Act allowed it to go beyond those criteria and, under the unique facts of this case, found that Omega had acted in bad faith. Sportsman's got the domain name sportys.com. (Sporty's Farm v. Sportsman's Market, Inc, Docket Number 98-7452).
d. What You Can Sue For
Under the Anti-Cybersquatting Act, victorious cybersquatting victims can ask the court for an injunction against the cybersquatter, and for monetary damages.
Injunctive relief is a court order requiring the domain name registrant to transfer the domain name to the plaintiff. Injunctive relief is available whether the cybersquatting occurred before or after the Act took effect.
Recovering Your Good Name
If a cybersquatter has registered your personal name—or a name that is "substantially or confusingly similar" to it—you can sue in federal court to have the name transferred back to you. However, you will have to prove that the domain name registration was done with the specific intent of selling it back to you or to a third party for a profit. As a general rule, this will only work for famous people and politicians, since it's unlikely that the name would be registered with an intent to make a profit unless it belonged to someone well known.
If you win your lawsuit against the cybersquatter, you are also entitled to recover three times the total amount of money you lost because of the cybersquatter, plus the profits realized by the cybersquatter from his or her illegal activity, plus your court costs. In exceptional cases, you can also be awarded attorney's fees. However, cybersquatting usually doesn't cause actual monetary losses (though it does cause you massive inconvenience). Nor does it generate profits, unless you paid the squatter. So, at your option, the Court can award you "statutory damages" of $1,000 to $100,000. Since statutory damages do not require proof of any type, they offer you a realistic opportunity to recover money as well as the domain name.
Importantly, money damages (both actual and statutory) may only be recovered for cybersquatting activity that occurred after November 29, 1999. For instance, if the cybersquatting activity complained of is the registration of the name, and the registration occurred before November 29, 1999, you can't recover money damages. However, you can recover for other prohibited activities that occurred after November 29, 1999. For example, even if the domain name was registered before November 29, 1999, you can still recover money damages if the domain name was trafficked in (for instance, offered for sale) or used after November 29, 1999.
If You Can't Find the Cybersquatter
You may run into trouble when you try to sue a cybersquatter, because you don't have a physical address to which to send the documents (a complaint and summons) that get the lawsuit started. A lawsuit generally can't begin until the person or business is properly notified that it's being sued. And you can't send that notification by email. Some cybersquatters provide inaccurate contact information to the domain name registration service, making them next to impossible to track down.
If you can convince the court that you've been diligent in trying to locate the cybersquatter, but have failed to do so, the court will order the domain name registration to give you the name. This is called an "in rem" action.
•are already in business,
•use a distinctive name to identify your product or service, and
•want to use that name as your domain name.
If you already use your proposed domain name to market products or services, you may have the upper hand in a dispute with someone who's using the domain name. Under trademark law, the firstperson to use a mark in commerce is considered the owner (more on this in Chapter 3, Section B). So if you used the name to market your products or services before the domain name registrant started using its domain name, you can prevent another business from using the same mark if:
•the mark is nationally famous (laws against trademark dilution protect famous marks from use by others, even if there is no customer confusion—see Chapter 4, Section G2), or
•the use creates a likelihood of customer confusion (discussed in some detail in Chapter 7), or
•the other user is a "cybersquatter" under federal law.
Sample Domain Name Transfer Agreement
Domain Name Transfer Agreement
(Buyer)
and (Seller)
agree as follows:
1.Seller assigns to Buyer all right, title and interest worldwide to the
[Domain Name] domain name, together with any goodwill associated with it.
2.Seller represents that Seller has full power to enter into and perform this Agreement.
3.Seller will promptly apply to Network Solutions, Inc. (NSI) to transfer ownership and management of [Domain Name] to Buyer under current NSI procedures for modifying a domain record. Specifically, Seller will instruct NSI to change the billing name, technical contract and administrative contact for [Domain Names] to [new billing name, technical contact and administrative contact information] . Seller will provide the information and email messages, and execute documents, necessary to accomplish the transfer of the domain name.
4.Buyer will pay Seller $ upon confirmation that NSI has changed the billing name, technical contact, and administrative contact as specified in Paragraph 2. A current printout of a WHOIS query provided to Buyer by Seller will be sufficient evidence of the domain name transfer. Buyer will issue a check for the full amount made out to , and send it via overnight delivery service to Seller at the address below.
5.As a couresy, Buyer will attempt to forward to Seller from time to time any misdirected email messages received through the [Domain Name] domain name. Seller recognizes that Buyer's hardware and the Internet itself may not always function perfectly, and that delays might be involved in forwarding the email messages. In no event will Buyer be liable for any lost profits, lost revenue, lost data or any form of special, incidental, indirect, consequential or punitive damages of any kind, whether based on breach of contract or warranty, tort (including negligence), product liability or otherwise ( wheather or not foreseeable), even if informed in advance of the possibility of such damages, for failure to deliver or timely deliver and email messages.
6.This Agreement will be governed by the laws of the State of [Buyer's state] .
7.If any provision of this Agreement is held by a tribunal od competent jurisdiction to be contrary to law, the remaining provisions will remain in effect.
8.This Agreement constitutes the entire agreement between the parties with the respect to the [Domain Name] domain name. This Agreement may not be changed in any respect except in writing duly executed by authorized representatives of each of the parties.
Seller's Full Name Buyer's Full Name
Seller's Signature Buyer's Signature
Date Date
Address Address
1. Choosing a Strategy
If you are a trademark holder and want to challenge the use of a domain name, you will first need to decide on a strategy for going after the registrant. You have three choices:
•Use the dispute resolution service offered by ICANN. ICANN, the international nonprofit organization now in charge of domain name registrations worldwide, recently implemented a process called the Uniform Domain Name Dispute Resolution Policy, or UDRP. This administrative procedure works only for cybersquatting disputes—that is, when someone has registered your name in a bad-faith attempt to profit from your trademark. It is potentially less expensive (about $1,000 to $2,500 in fees) and quicker than filing a lawsuit (just 57 days to resolution).
•File a trademark infringement lawsuit. If you win, the court will order the domain name holder to transfer the domain name to you, and may award you money damages as well. A lawsuit is always an option, whether or not you pursue ICANN's dispute resolution process. We discuss infringement lawsuits in Section 3, below.
•File a cybersquatting lawsuit. If you win, you can not only get the domain name you want, you may also win money damages from the cybersquatter.
Strategies for Going After Someone Using Your Trademark as a Domain Name
ICANN Dispute Trademark Cybersquatting
Resolution infrinqement Lawsuit
Procedure Lawsuit
Lawyer needed? No Yes Yes
Cost Approximately $10,000 and up $10,000 and up
$1,000 to $2,500
Time 57 days from date you Months if the case A month or two file your complaint settles, years if it goes to trial
Grounds for relief Bad-faith registration of Trademark Cybersquatting
your name infringment
Who can be Any domain name As a practical As a practical
registrant matter, only U.S. matter, only U.S.
registrants
What you may win The domain name you The domain name The domain name
want you want plus you want, plus
money damages money damages
for post-November
1999 activity
2. The ICANN Dispute Resolution Procedure
ICANN's new dispute resolution procedure applies to virtually all domain name registrants. (Before ICANN acted, NSI, which had a monopoly on domain name registrations in the United States, had its own dispute resolution system, which handled disputes between its domain name registrants and trademark holders.)
a. What You Must Prove to Win
To win your case in the ICANN procedure, you'll have to prove three things:
•The domain name at issue is identical or confusingly similar to a mark that you own, whether or not the mark has been registered as a trademark in the U.S. or abroad,
•The registrant has no rights or legitimate interests in the domain name, and
•The domain name was registered and/or is being used in bad faith.
You must prove similar things to prevail in a lawsuit based on the federal Anti-Cybersquatting Consumer Protection Act, discussed in Section 4, below. The Anti-Cybersquatting Act is, however, as a practical matter, enforceable in the United States alone. The ICANN procedure, on the other hand, can conveniently be used against domain name registrants outside of the U.S. as well.
Here's a look at each of these three elements in more detail.
Domain name's confusing similarity to your trademark. You must assert that you own the mark because you were the first to use it or because trademark registration has given you the right to its exclusive use. You must also state that the domain name really is confusingly similar to your mark. (If you need help understanding customer confusion, see Chapter 7.) If the domain name at issue is preventing you from using your mark as your own domain name, the "identical or confusingly similar" test will probably be satisfied.
Registrant's lack of rights or legitimate interests in the name. To prove this element, you must show three things:
•The registrant has never tried to use the domain name (or a similar one) in connection with legitimate commerce, on or off the Web;
•The registrant was never generally known by the domain name, even if the name wasn't used in commerce as a trademark; and
•The registrant isn't using the domain name in any legitimate way. A legitimate use would, for example, consist of use on a non-commercial website that engages in satire or criticism. But the use would not be legitimate if the registrant's actual intent is to divert consumers from your website or business location, or to tarnish your mark by lessening its reputation for quality.
Registrant's bad faith. This one is really the flip side of the second item. The registrant has acted in bad faith if you can show any of the following:
•The registrant acquired the domain name with the intent to sell it back to you or your business in particular, or to a competitor of yours, for profit. This wouldn't apply to those who acquire domain names with the intent to auction them off to the highest bidder later, because the plan was not directed specifically at you.
•The registrant has a pattern of acquiring domain names with the intent to block their use by legitimate trademark owners. That is, the registrant is a true cybersquatter. (See Section 4, below.)
•The registrant is a competitor who acquired the domain name primarily to disrupt your business
•The registrant is using the domain name to attract users to the website by creating customer confusion. (See Chapter 7.)
b. How the Process Works
Your first step is to choose a dispute resolution "provider," which is an organization approved by ICANN. So far, ICANN has approved just two providers. Each has its own supplemental rules for dispute resolution, so in addition to ICANN's procedural rules you must follow the provider's rules. You can check them out at the provider's website, listed below. These sites offer detailed discussions about how to navigate the process.
To begin your case, you send a complaint to the provider, setting out specific facts that prove the three elements discussed above. Check the provider's website for fee information. Who pays the fees and how much will vary depending on the circumstances and the provider.
After reviewing the complaint for completeness, the provider will send the registrant a copy of the complaint, along with directions on how the registrant can respond and within how much time. The domain name registrant can continue to use the name until the dispute is resolved.
The provider will usually issue a response based solely on the complaint and the response. Either party may go to court if the decision is not to their liking. However, if the decision is in your favor, you will get the domain name transferred to you unless the registrant promptly files a lawsuit to prevent it.
The ICANN procedure is still new, and there will no doubt be numerous changes to it; the rules may have changed by the time you read this book. Check out the resources listed below to get the most up-to-date rules.
Current Information About Dispute Resolution Procedures
ICANN:www.icann.org. Go there for the most current information about the new dispute resolution process.
DomainMagistrate.com:www.DomainMagistrate.com. This site is operated by Network Solutions, Inc., to help people figure out how to use the new domain name dispute resolution procedures.
Dispute Resolution Providers: ICANN has named two organizations, called providers, to help resolve domain name disputes: the World Intellectual Property Organization (WIPO):http://arbiter.wipo.int/domains and the National Arbitration Forum:www.arbforum.com/domains/.
3. A Trademark Infringement Lawsuit
As the senior user of a trademark, you can bring a trademark infringement lawsuit against the domain name owner if your trademark is distinctive and the use of the domain name creates a likelihood of customer confusion. As part of this suit, you can ask the court to require the owner of the domain name to transfer it to you and you may also be able to recover damages and attorney's fees. Of course, going to court is time-consuming and may cost you more than you'll recover from the defendant. You'll want to carefully weigh the possible benefits against the costs.
Things can get confusing if the trademark you've been using isn't exactly the same as your proposed domain name. If it's almost the same, trademark law lets you maintain ownership. But you can lose your seniority if there are significant differences. For instance, in one recent case, a company that owned the trademark "The Movie Buff's Movie Store" registered the domain name moviebuff.com. Another company, which had been using the actual mark "moviebuff" on a CD-ROM containing movie information, was prevented from using moviebuff.com as a domain name. The "Movie Buff's Movie Store" mark had been in use before the other company started using moviebuff on its CD-ROMs. Who was the senior user of the moviebuff trademark? The U.S. District Court ruled that the company using "The Movie Buff's Movie Store" was the senior user because it had used that name before the other company used moviebuff. But an appeals court reversed, ruling that "The Movie Buff's Movie Store" was an entirely different mark than moviebuff, and ordered the "Movie Buff's Movie Store" company to surrender the domain name to the moviebuff thcompany. (Brookfield v. West Coast Entertainment Corp., 174 F.3d 1036 (9 Cir. 1999). You can read this case at http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=9856918.)
TipTrademark: Legal Care for Your Business & Product Name, by Stephen Elias and Kate McGrath (Nolo), is a book that explains how rights to conflicting trademarks are resolved and what's typically involved in trademark infringement actions
Trademark Disputes: Who Wins, Who Loses & Why, by Stephen Elias, is a downloadable eGuide, available at www.nolo.com.
4. An Anti-Cybersquatting Lawsuit
If you own your name and find that someone or some business is holding it hostage as a domain name until you pay a large sum for it, you may be the victim of cybersquatting. You can sue to get your domain name—and possibly some money damages—under a 1999 federal law known as the Anti-Cybersquatting Consumer Protection Act. Because suits must be filed in federal court, you almost certainly will need to hire a lawyer.
Under the Act, cybersquatting means registering, trafficking in or using a domain name with bad-faith intent to profit from the goodwill of a mark belonging to someone else. It refers to the practice of buying up domain names reflecting the names of existing businesses with the intent of selling thnames for a profit back to the businesses when they go to put up their websites.
The Origins of Cybersquatting
The practice that's come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the World Wide Web. Some entrepreneurial souls registered the names of well-known companies as domain names, with the intent of selling the names back to the companies when they finally woke up. Panasonic, Fry's Electronics, Hertz and Avon were among the "victims" of cybersquatters. Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that nailing down domain names is a high priority.
a. Recognizing Cybersquatting
How do you know if a cybersquatter has your name? As a general rule, you should first see whether your proposed but unavailable domain name takes you to a legitimate website. Simply enter www. and the domain name in your browser.
If the domain name takes you to a website that appears to be functional and reasonably related in its subject matter to the domain name, you probably aren't facing a case of cybersquatting. However, you may have a case of trademark infringement, as described in Section 3, above.
But if your browser produces any of the following results, and you are a famous individual or are using your existing business name as your proposed domain name, you may have a case of cybersquatting on your hands:
•You get a "can't find server" message
•You get an "under construction" page, or
•You get a page that appears to have no relationship to the meaning of the domain name. For instance, if you type the well-known Nolo trademark WillMaker into your browser (www.willmaker.com), you get Shells' Ragtown Political Art Studio. (Yes, Nolo.com appears to have its own cybersquatter problems.)
Although each of these results suggests the possibility of cybersquatting, there may also be an innocent explanation for the lack of a functioning website, especially if the website is still under construction. It's very easy and inexpensive to register or reserve domain names but more difficult to put up the actual website. You can reserve a domain name for two years, so the fact that a website is not up, even months after the name was reserved or registered, does not necessarily mean that the registrant doesn't have perfectly legitimate plans to have a website in the future.
Before jumping to any conclusions about a proposed domain name that is not available, contact the registrant. (See Chapter 2, Section B, for how to do this.) Find out whether there is a reasonable explanation for the use of the name, or if the registrant is willing to sell you the name at a price you are willing to pay.
Sometimes paying the cybersquatter is the best choice. Even though Congress has provided a remedy against cybersquatting, it requires a federal court lawsuit and, almost by necessity, lawyers. It may be a lot cheaper and quicker for you to come to terms with a cybersquatter than to stand on your rights and invoke the power of the federal court with its attendant costs and delay. Although you may be able to recover your costs and attorney fees if you win, there is no guarantee; it's completely up to the judge.
b. What You Must Prove to Win
If somebody else has already registered your business name or other mark as a domain name, you can sue the registrant in federal court to have the domain name transferred to you. To win, you'll have to prove all of the following:
•The registrant had a bad-faith intent to profit from your mark (see section c, below),
•Your mark was distinctive at the time the domain name was first registered (see Chapter 4 for more on what makes a mark distinctive),
•The domain name is identical or confusingly similar to your mark, and
•Your mark qualifies for protection under federal trademark laws (see Chapter 8)—that is, you were the first to use the mark in commerce.
You don't have to show that customers are likely to be confused. (This is different from a trademark infringement lawsuit; see Section 2 above.) This means you can sue the domain name registrant even if the website sells products or services that are completely unrelated to yours.
c. Bad Faith
To win a lawsuit based on the Anti-Cybersquatting Act, you must show bad faith on the part of the domain name registrant. This will not be easy. There is no bad faith if the person who registered the name had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. If a cybersquatter is able to show a reason for registering the domain name other than to sell it back to the trademark owner, then the courts will allow him to continue.
If you can answer yes to any of the following questions, then there may be no bad faith:
•Does the domain name registrant have an arguable claim to the name because of the registrant's existing trademark rights? There may be concurring uses of the same name that are noninfringing, such as the use of the "Delta" trademark for both air travel and sink faucets. Similarly, the registration of the domain name "deltaforce.com" by a movie studio would not tend to indicate a bad-faith intent on the part of the registrant to trade on Delta Airlines' or Delta Faucets' trademarks.
•Does the domain name identify the registrant as an individual? A person is entitled to his or her own name, whether in business or on a website. Similarly, a person may bear a legitimate nickname that is identical or similar to a well-known trademark, such as in the well-publicized case of the parents who registered the domain name "pokey.org" for their young son who goes by that name.
•Has the registrant ever used the domain name in connection with the offering of goods or services? If the registrant has a commercially sensible reason for using the domain name (other, that is, than selling it back to you), there is probably not bad faith.
•Is the registrant legally using the mark on the website itself? It's legal to make noncommercial or fair uses of others' marks online, such as in comparative advertising, comment, criticism, parody or news reporting. The mere fact that the domain name is used for one of these purposes would not alone establish a lack of bad faith.
Congress has also provided us with some indicators of the bad faith necessary to prove a cybersquatting charge. If the answer to any of the following questions is yes, the court may be inclined to find that the registrant is acting in bad faith, or did so when the domain name registration was made.
•Is the registrant using the domain name to divert users from your site to another site where customer confusion is likely to result or your trademark's reputation for quality is harmed? In other words, is the domain name being used in a way that negatively affects your website or the value of your trademark?
•Has the registrant offered to sell the domain name to you without having ever legitimately used the domain name on a commercial website?
•Has the registrant provided false or misleading contact information to the domain name registry or failed to keep this information up to date?
•Has the registrant registered multiple names that are the same or confusingly similar to distinctive marks? In other words, is there an apparent pattern of cybersquatting?
•Is the mark in question famous or highly distinctive? The more distinctive or famous the mark, the more the court is likely to conclude that the registrant acted in bad faith.
It's the Facts That Count
In one of the first cases decided under the federal anti-cybersquatting law, a court ruled that a business that had used another business's trademark as a domain name had acted in bad faith and was a cybersquatter.
In 1985, Sportsman's Market (Sportman's) registered the trademark Sporty's, which it used on its aviation products catalog. Ten years later, Omega Engineering decided to sell aviation products and registered the domain name sportys.com. Nine months later, Omega created a wholly-owned subsidiary called "Sporty's Farms" for the alleged purpose of operating a Christmas tree farm, and sold the sportys.com domain name to it. Sportsman's learned of the registration, sued to obtain the domain name for its own use and won in U.S. District Court. Sporty's Farms appealed the trial court's decision.
During the appeal, Congress passed the Anti-Cybersquatting Act, and the appeals court applied it to this dispute. The court noted that the particular facts in this case didn't mesh well with the criteria set out in the Act for determining bad faith, a necessary ingredient for a successful cybersquatting charge. However, the court also noted that the Act allowed it to go beyond those criteria and, under the unique facts of this case, found that Omega had acted in bad faith. Sportsman's got the domain name sportys.com. (Sporty's Farm v. Sportsman's Market, Inc, Docket Number 98-7452).
d. What You Can Sue For
Under the Anti-Cybersquatting Act, victorious cybersquatting victims can ask the court for an injunction against the cybersquatter, and for monetary damages.
Injunctive relief is a court order requiring the domain name registrant to transfer the domain name to the plaintiff. Injunctive relief is available whether the cybersquatting occurred before or after the Act took effect.
Recovering Your Good Name
If a cybersquatter has registered your personal name—or a name that is "substantially or confusingly similar" to it—you can sue in federal court to have the name transferred back to you. However, you will have to prove that the domain name registration was done with the specific intent of selling it back to you or to a third party for a profit. As a general rule, this will only work for famous people and politicians, since it's unlikely that the name would be registered with an intent to make a profit unless it belonged to someone well known.
If you win your lawsuit against the cybersquatter, you are also entitled to recover three times the total amount of money you lost because of the cybersquatter, plus the profits realized by the cybersquatter from his or her illegal activity, plus your court costs. In exceptional cases, you can also be awarded attorney's fees. However, cybersquatting usually doesn't cause actual monetary losses (though it does cause you massive inconvenience). Nor does it generate profits, unless you paid the squatter. So, at your option, the Court can award you "statutory damages" of $1,000 to $100,000. Since statutory damages do not require proof of any type, they offer you a realistic opportunity to recover money as well as the domain name.
Importantly, money damages (both actual and statutory) may only be recovered for cybersquatting activity that occurred after November 29, 1999. For instance, if the cybersquatting activity complained of is the registration of the name, and the registration occurred before November 29, 1999, you can't recover money damages. However, you can recover for other prohibited activities that occurred after November 29, 1999. For example, even if the domain name was registered before November 29, 1999, you can still recover money damages if the domain name was trafficked in (for instance, offered for sale) or used after November 29, 1999.
If You Can't Find the Cybersquatter
You may run into trouble when you try to sue a cybersquatter, because you don't have a physical address to which to send the documents (a complaint and summons) that get the lawsuit started. A lawsuit generally can't begin until the person or business is properly notified that it's being sued. And you can't send that notification by email. Some cybersquatters provide inaccurate contact information to the domain name registration service, making them next to impossible to track down.
If you can convince the court that you've been diligent in trying to locate the cybersquatter, but have failed to do so, the court will order the domain name registration to give you the name. This is called an "in rem" action.
Chapter 6: Making Sure Your Domain Name Doesn't Conflict With Another Business's Trademark
The Information on chapter 6 is shown below
Overview
If your domain name is the same or very similar to another business's trademark, the trademark owner may someday (maybe someday soon) force you to stop using the name. Only by doing a search can you be reasonably assured that you have a legal right to use your proposed domain name. This chapter explains how to do your own search on the Internet or how to hire and use a trademark search service.
There are actually two elements you need to consider when determining whether or not your domain name may violate someone else's trademark rights. The first question, which you can answer with a trademark search, is whether your domain name is identical or very close to an existing trademark. The second issue is whether or not your use of the domain name would confuse customers, damaging the trademark owner's business or reputation. Deciding whether the simultaneous use of two similar trademarks is likely to create customer confusion is not always easy. (Chapter 7 discusses how to make this assessment; a consultation with a trademark attorney also may be wise, especially in close cases.)
For example, suppose you decide to start a Web-based business auctioning small antique collectibles such as old watches, jewelry and figurines electronically and at discounted prices. Your location in part of the San Francisco Bay Area called the East Bay prompts you to seek the domain name Ebaybuys.com. You search to see if the domain name is available from NSI and you find out it is available. You then surf over to the PTO's website, where you conduct a search of the PTO's registered and pending trademarks database using the instructions in Section C, below. You find the name Ebay is registered to Ebay, Inc., and that Ebay, Inc., is using the domain name ebay.com to auction antiques and collectibles as well as other types of goods.
The names Ebay and Ebaybuys obviously differ, but they may be close enough to confuse people. Because you also auction antiques, consumers might go to your website when they really wanted to go to Ebay's website. Or they might think that you are affiliated with Ebay because your domain name also uses "Ebay" as the root. This potential for consumer confusion means you are probably in danger of infringing Ebay, Inc.'s, trademark.
TipBe wary of search offers. Lots of banner ads on domain-name related websites offer services, including trademark searches. There is only one free trademark database available on the Web—the one offered by the U.S. Patent and Trademark Office and described in this chapter. Any other type of search is likely to cost you. It may be worth your while to pay for a competent search, but read this chapter before signing up. It may be that the service will charge you for the kind of search you can easily do yourself for free.
There are actually two elements you need to consider when determining whether or not your domain name may violate someone else's trademark rights. The first question, which you can answer with a trademark search, is whether your domain name is identical or very close to an existing trademark. The second issue is whether or not your use of the domain name would confuse customers, damaging the trademark owner's business or reputation. Deciding whether the simultaneous use of two similar trademarks is likely to create customer confusion is not always easy. (Chapter 7 discusses how to make this assessment; a consultation with a trademark attorney also may be wise, especially in close cases.)
For example, suppose you decide to start a Web-based business auctioning small antique collectibles such as old watches, jewelry and figurines electronically and at discounted prices. Your location in part of the San Francisco Bay Area called the East Bay prompts you to seek the domain name Ebaybuys.com. You search to see if the domain name is available from NSI and you find out it is available. You then surf over to the PTO's website, where you conduct a search of the PTO's registered and pending trademarks database using the instructions in Section C, below. You find the name Ebay is registered to Ebay, Inc., and that Ebay, Inc., is using the domain name ebay.com to auction antiques and collectibles as well as other types of goods.
The names Ebay and Ebaybuys obviously differ, but they may be close enough to confuse people. Because you also auction antiques, consumers might go to your website when they really wanted to go to Ebay's website. Or they might think that you are affiliated with Ebay because your domain name also uses "Ebay" as the root. This potential for consumer confusion means you are probably in danger of infringing Ebay, Inc.'s, trademark.
TipBe wary of search offers. Lots of banner ads on domain-name related websites offer services, including trademark searches. There is only one free trademark database available on the Web—the one offered by the U.S. Patent and Trademark Office and described in this chapter. Any other type of search is likely to cost you. It may be worth your while to pay for a competent search, but read this chapter before signing up. It may be that the service will charge you for the kind of search you can easily do yourself for free.
A. What Is a Trademark Search?
You want to engage in a systematic hunt for any trademarks that are the same or similar to your domain name. If you find such trademarks, you'll need to determine (with the help of Chapter 7) whether or not using your domain name would likely confuse customers.
There are three main categories of trademarks to search:
•Registered trademarks—trademarks that have been registered with the U.S. Patent and Trademark Office (PTO)
•Pending registration trademarks—names for which applications for registration have been filed with the PTO and are pending further action, and
•Unregistered trademarks—trademarks that are being used in commerce but aren't pending or registered.
There are three main categories of trademarks to search:
•Registered trademarks—trademarks that have been registered with the U.S. Patent and Trademark Office (PTO)
•Pending registration trademarks—names for which applications for registration have been filed with the PTO and are pending further action, and
•Unregistered trademarks—trademarks that are being used in commerce but aren't pending or registered.
B. Should You Do It Yourself?
There are three ways to conduct a trademark search. You can:
•Do it yourself using free online databases.
•Hire a search service or an attorney to do it for you.
•Do some of it yourself and hire someone to do the rest.
The third approach may give you the best legal protection for your time and money. Using your computer to search for registered trademarks on the PTO's website can be quick, easy and can provide good preliminary information. But before you actually put any serious money into building and marketing your own website, it would be wise to put your choice of domain name through a more thorough search for both registered and unregistered marks. You can also do this more rigorous search yourself if you are willing to climb a moderate learning curve. (See Section D, below.) Or, you can hire a trademark search service to do it for you. Count on paying roughly $200 to $400 per name. There are some things that a search service can do more efficiently (and often more inexpensively) than you can do for yourself. (See Section E, below.)
•Do it yourself using free online databases.
•Hire a search service or an attorney to do it for you.
•Do some of it yourself and hire someone to do the rest.
The third approach may give you the best legal protection for your time and money. Using your computer to search for registered trademarks on the PTO's website can be quick, easy and can provide good preliminary information. But before you actually put any serious money into building and marketing your own website, it would be wise to put your choice of domain name through a more thorough search for both registered and unregistered marks. You can also do this more rigorous search yourself if you are willing to climb a moderate learning curve. (See Section D, below.) Or, you can hire a trademark search service to do it for you. Count on paying roughly $200 to $400 per name. There are some things that a search service can do more efficiently (and often more inexpensively) than you can do for yourself. (See Section E, below.)
C. How to Do Your Own Trademark Search on the Internet
Searching for registered or pending trademarks on your own by using the PTO's online trademark database is easy. A typical search takes only about 15 minutes. You can make best use of your time by downloading the PTO's help file and studying it before starting your search.
This search allows you to compare your proposed domain name with registered trademarks and trademarks that are pending registration with the PTO. The results you come up with will include a list of the trademarks that meet your search parameters, and the names, addresses and contact information for the owners of those trademarks. You'll also learn how the trademark is being used (on what products or for what services) and what "international class" (category of goods or services) the mark has been assigned to by the trademark owner or applicant. This information is key in deciding whether you can go ahead and use the name without creating the likelihood of customer confusion. (See Chapter 7 for more on the international trademark classification scheme and why it matters in cases of apparent conflict.)
Meet Tess
As we were shipping this book to the printer, a new search system, called TESS (Trademark Electronic Search System) appeared on the PTO's trademark website, right below the now "older" system described in this chapter. The PTO plans to maintain both search systems for the immediate future, and the older system should continue to be sufficient for your needs.
Still, you may want to give TESS a try. It offers several features that aren't available on the older system:
•The "browse dictionary" option allows you to enter the name you are searching and see all the marks that appear before or after that name in the PTO's alphabetical list of trademark files.
•The Structured Form Search, while similar to the Boolean serach described in this chapter, provides a larger number of options for structuring your search request. For example, in TESS you can search for two terms that are near each other or right next to each other. In the older system, you are limited to searching for terms that are located in the part of the trademark record you are searching.
•TESS not only reports marks that are registered or pending, but also marks that are, as TESS puts it, dead. A mark is considered dead if its registration was cancelled by PTO or abandoned by the applicant.
Tess if the system that the PTO trademark examiners ues. It is both powerful and flexible, and you may become confused if you aren't up to speed. You will do well to stick close to the online help as you search.
CautionBefore you launch, get an in-depth search. The step-by-step instructions in this chapter are limited to how to do a free search on the Web for registered and unregistered trademarks likely to conflict with your proposed domain name. For most people this level of search is just fine as a first step, but this chapter doesn't pretend to teach you the many tricks of the trade used by skilled trademark searchers. Before investing a lot of time and money promoting your website under your chosen domain name, you will be wise to conduct a more intensive search or pay a pro to do it for you. (See Section D and Section E, below.)
1. Go to the Trademark Database
The first step is to go to the PTO's website at http://www.uspto.gov/tmdb/index.html. You'll see the page shown below:
2. Choose the Type of Search
There are four different ways to search the database. The PTO provides online help, which is pretty good, along the way.
According to the PTO's Help file, the easiest option is the Combined Trademarks search. However, we disagree (respectfully, of course). All things considered, we think you are probably better off starting with the Boolean Search option. It provides the same basic choices as the Combined Trademarks search but adds a level of flexibility that makes it easier to search the database.
3. Select the Database to Search
You can search just for registered trademarks, just for pending trademarks, or for both. For most purposes, you'll want to search for both categories. After all, if a trademark is pending, you will have to pay as close attention to it as if it were already registered. Further, if you already own a trademark (because you were the first to use it) that you think conflicts with a pending trademark, you can initiate what's known as an "opposition" to prevent the registration. An opposition is a formal proceeding conducted by the PTO that is similar to a trial; you'll probably need a lawyer. (See Chapter 9.)
4. Formulate Your Search
The heart of all trademark searching is choosing the correct terms to search. Here are some tips for making the most of your trademark search.
a. One Term or Two?
With a Boolean search, you can look for one or two terms, which you enter as Term 1 and Term 2 on the screen. You may need to search for only one term. For instance, if your proposed domain name is MandalayLemonPies.com, you might want to search only for the word "Mandalay," the distinctive element of your name. If so, you would enter that word as Term 1, leave the Term 2 box blank, and then click Search. Or, if you wanted to search for all trademarks containing the term "lemon pie," you could enter that exact phrase—surrounded by quotation marks—as Term 1 and conduct your search.
TipYou can search for more than two terms. If you want to formulate a search that uses three or more terms, you can start with the Manual Search option instead of a Boolean search. It works the same way as does the Refine Search procedure, which is explained in Section 6 below.
b. Using Operators
If you enter terms in both the Term 1 and Term 2 boxes, you'll need to pick what's called an "operator" to connect them. You can choose among the operators AND, OR and ANDNOT.
If you select AND from the pull-down menu of operators, you are telling the search engine to pull up all trademarks that contain both of your search terms. For example, the search query "shark AND talk" will produce every trademark that contains both the word "shark" and the word "talk." It will not produce a trademark that doesn't have both words.
If you enter these same search terms, but select the OR operator (making your query "shark OR talk"), your search will produce a list of all trademarks with the word "talk" and all trademarks with the word "shark." Needless to say, that list would be very long, because so many trademarks are likely to have the word "talk" in them. However, this approach can be very useful if your proposed domain name contains two distinctive words and you want to review every trademark that has either word.
For instance, suppose you're considering the name AnalogAstromaps.com for a website featuring a series of star charts. You would most likely want to use the OR operator to search for any trademarks containing either "analog" or "astromaps." Any trademark with either term might knock out your proposed domain name if the context showed a likelihood of customer confusion.
The third operator—ANDNOT—is not nearly as powerful as the AND and OR operators. You can use the ANDNOT operator to exclude from the search results any term you enter as Term 2. For instance, you may decide that you want to see every trademark with the term "astromap" but no trademark with the term "starchart." This search query would look like this: astromap ANDNOT starchart.
There is actually one more operator, but it's rarely used. The XOR operator lets you search for any trademark that has either Term 1 or Term 2, but not both. For example, if you searched for "analog XOR astromap," your search would turn up trademarks with either "analog" or "astromap," but not trademarks that contain both terms. There is seldom a reason to exclude a combination of two terms—indeed, in this example, the combination would be the most important trademark to retrieve.
c. Focusing on the Most Distinctive Terms
Focus on the part of your domain name that is most distinctive, because it is that part of your name that would most likely cause consumers to confuse your name with an existing trademark using that term. For instance, if your proposed name is zoroasterdesigns.com, the word to use in your search is "zoroaster," since it is by far the more distinctive of the two words. "Designs" is a generic word that can be used in a lot of different trademarks without creating customer confusion. So although you should search for any mark that contains either designs or Zoroaster, you are primarily interested in Zoroaster. You would not want to search just for "zoroasterdesigns," because it is very unlikely that that particular word would show up as a registered or pending trademark. (And if it did, a search for "designs OR zoroaster" would turn it up, anyway.)
It is also wise to go a step further and search for marks that contain one or more of the distinctive syllables in your name. For example, if you want to use bioscan.com, you might want to look for trademarks that contain either "bio" or "scan," because you might turn up something similar like "biosearch" or "cellscan." But it wouldn't make much sense to search for marks containing syllables that wouldn't likely be used. For example, the syllables "gazoon" and "tite" are not nearly as likely to be used in existing marks as are "bio" or "scan."
TipDon't use the .com in your search. Even though you are looking for a possible conflict with your domain name, which probably ends with a .com, don't enter the .com in the search engine. Although an increasing number of domain names are being registered as marks, complete with the .com, it is the other part of the name (to the left of the dot), that will create any likelihood of confusion, and thus a trademark conflict. Adding a .com to your search will very likely produce a report that overlooks important marks you need to know about.
d. Searching for Phrases
You can use two or more words as a single search term. All you need to do is enclose the phrase you're searching for in quotation marks. For example, a sensible search for Mandalay Lemon Pies would consist of searching for both Mandalay and the phrase Lemon Pies. You would do this by entering Mandalay as Term 1 and "Lemon Pies," (including the quotation marks), as Term 2.
e. The Truncated Words Feature
When you search for a particular term, it's useful to also search for slight variations of the term—for instance, if you are searching for the word "saber," you'll want to know about trademarks using the British spelling, "sabre." The computer won't find these variants for you without special instructions.
Fortunately, it's easy to get the computer to search for slight variations. One of the options offered by the PTO's Boolean search is what's called "right truncation." Right truncation allows you to chop off as much of the right-hand portion of a word as you wish and have the computer search for all words that start with what's left. For instance, instead of wondering whether to search for "sabre" or "saber," you could search for all trademarks which contain the root segment "sab." This would pull up both variations of "saber," but would also produce unrelated terms, such as "sabbath." To create this truncation effect, simply put an asterisk at the end of the string of letters that you want to search, as in "sab*."
f. Searching for Sound-Alikes
In addition to searching for names that are similar to yours in appearance, it is also important to search for words that sound alike. For example, gazoontite.com and gesundheit.com don't look that much alike, but they sound identical and might well confuse customers.
5. Choose the Part of the Database to Search
After you enter your search terms and choose the appropriate Boolean operator, there is one further step to take. For each term, choose which parts (fields) of the database you want to search. There are a number of choices here; the online help explains each field. We recommend the default field, which is "combined trademarks." Combined trademarks includes the literal version of all trademarks, registered or pending, and a slight variation on the trademark entered in the record by the PTO when the variation is common. For instance, if the trademark uses the word term light, the PTO may also add the word "lite."
Trademark Searching: A Real-Life Example
Bob and Steve have played tennis together for many years. When they hit their mid-fifties, one or the other would occasionally show up with a minor injury (sore shoulder, tender elbow) that dictated a change of pace in the game. They invented some special rules to make the game more easygoing when one of them needed a break. Bob and Steve started to laughingly refer to the rules—and the game they produced—as "Geezer Tennis." Aha, a good title for a humorous book. And perhaps the term Geezer Sports might be used on a line of books and other products for aging athletes, which could be sold on the Web at geezersports.com.
Steve checks with NSI and finds that geezersports.com is available for registration. He then decides to use the PTO's trademark database to do a trademark search, to see whether Geezer Sports is available as a trademark. He chooses to search for both registered and pending trademarks, and enters "Geezer" as Term 1 and "Sports" as Term 2. He selects AND from the pull-down menu of operators and leaves the pull-down menu for fields on "Combined Trademarks."
The search results show no registered or pending trademark using "Geezer Sports." Now what? Steve takes another look at the proposed trademark and realizes that the distinctive part of the name is "geezer," and that "sports" is a generic term. In other words, if there are other trademarks out there using geezer, Steve should know about them, even if they don't also use "sports." Steve performs another search, this time using "geezer" as Term 1 and leaving the Term 2 box blank. This time, the search turns up five trademarks that use the word "geezer."
One of those trademarks is Geezer Golf. Uh-oh. Steve clicks Geezer Golf and discovers that Geezer Golf was registered in three international trademark classes: 016 (Paper goods and printed matter), 028 (Toys and sporting goods) and 035 (Advertising and business services). This means that the line of Geezer Sports books that Steve and Bob had imagined would fall into at least two of the same classes as those for which Geezer Golf is registered. (For more information about the trademark classification system, see Chapter 8, Section D.) Using geezersports.com might well confuse customers about articles sold on Bob and Steve's website and those identified by the existing trademark. (Customer confusion is discussed in Chapter 7.)
Bob and Steve are free to use geezersports.com as a domain name, because nobody else has claimed it. But because the name is so similar to a trademark that is being used in connection with similar types of products, the public might well be confused. This means that Bob and Steve probably couldn't get the name registered with the PTO—and even if they did, they might be sued for trademark infringement.
Alas, Steve and Bob give up on "Geezer Sports" but continue to enjoy their tennis rivalry. Maybe they'll come up with another clever name in the course of a particularly heated match.
6. Refine Your Search
After you get your results from a PTO search, you'll have an opportunity to refine your search. You can modify your search, either to broaden it if you received too few results, or to more narrowly focus your search if you received too many.
Probably the most important feature of the "Refine" or "Manual" search options is that you can combine Boolean operators. For example, suppose your proposed domain name is MiracleMediations.com. Using the Boolean search option as a starting place, you enter "mirac*" as Term 1 (truncating the term with the asterisk, to also search for "miracle") and "mediat*" as Term 2 (truncation lets you search for "mediate," "mediation" and "mediator" as well as "mediations"). You choose the AND operator to search for trademarks that contain both terms (plus the variations taken into account by the asterisk).
This search is a good start, but as you review your search results you realize that you want to search for trademarks that contain the word "arbitration" as well. To do this, you create a new search query that looks like this: "ms/mirac*" AND "ms/mediat*" OR "ms/arbitrat*." This search expression tells the computer that you want all trademarks that contain a variant of the truncatedterm "mirac*" and either the term "mediat*" or the term "arbitrat*."
The ms/ that precedes the truncated terms is what's known as a field code. The Manual/Refine search requires the use of these field codes if you want anything other than a "Combined Marks" search (the default search represented by the ms/). For instance, if you want to search for all marksowned by a particular company, you can use the field code "on/" in connection with the company's name. Similarly, use of the field code "gs/" lets you search for all marks that are used on goods or services containing the terms you use in your search query. For more on field codes, use the table that appears on the Manual/Refine search page and click whatever field code you wish to know more about.
This search allows you to compare your proposed domain name with registered trademarks and trademarks that are pending registration with the PTO. The results you come up with will include a list of the trademarks that meet your search parameters, and the names, addresses and contact information for the owners of those trademarks. You'll also learn how the trademark is being used (on what products or for what services) and what "international class" (category of goods or services) the mark has been assigned to by the trademark owner or applicant. This information is key in deciding whether you can go ahead and use the name without creating the likelihood of customer confusion. (See Chapter 7 for more on the international trademark classification scheme and why it matters in cases of apparent conflict.)
Meet Tess
As we were shipping this book to the printer, a new search system, called TESS (Trademark Electronic Search System) appeared on the PTO's trademark website, right below the now "older" system described in this chapter. The PTO plans to maintain both search systems for the immediate future, and the older system should continue to be sufficient for your needs.
Still, you may want to give TESS a try. It offers several features that aren't available on the older system:
•The "browse dictionary" option allows you to enter the name you are searching and see all the marks that appear before or after that name in the PTO's alphabetical list of trademark files.
•The Structured Form Search, while similar to the Boolean serach described in this chapter, provides a larger number of options for structuring your search request. For example, in TESS you can search for two terms that are near each other or right next to each other. In the older system, you are limited to searching for terms that are located in the part of the trademark record you are searching.
•TESS not only reports marks that are registered or pending, but also marks that are, as TESS puts it, dead. A mark is considered dead if its registration was cancelled by PTO or abandoned by the applicant.
Tess if the system that the PTO trademark examiners ues. It is both powerful and flexible, and you may become confused if you aren't up to speed. You will do well to stick close to the online help as you search.
CautionBefore you launch, get an in-depth search. The step-by-step instructions in this chapter are limited to how to do a free search on the Web for registered and unregistered trademarks likely to conflict with your proposed domain name. For most people this level of search is just fine as a first step, but this chapter doesn't pretend to teach you the many tricks of the trade used by skilled trademark searchers. Before investing a lot of time and money promoting your website under your chosen domain name, you will be wise to conduct a more intensive search or pay a pro to do it for you. (See Section D and Section E, below.)
1. Go to the Trademark Database
The first step is to go to the PTO's website at http://www.uspto.gov/tmdb/index.html. You'll see the page shown below:
2. Choose the Type of Search
There are four different ways to search the database. The PTO provides online help, which is pretty good, along the way.
According to the PTO's Help file, the easiest option is the Combined Trademarks search. However, we disagree (respectfully, of course). All things considered, we think you are probably better off starting with the Boolean Search option. It provides the same basic choices as the Combined Trademarks search but adds a level of flexibility that makes it easier to search the database.
3. Select the Database to Search
You can search just for registered trademarks, just for pending trademarks, or for both. For most purposes, you'll want to search for both categories. After all, if a trademark is pending, you will have to pay as close attention to it as if it were already registered. Further, if you already own a trademark (because you were the first to use it) that you think conflicts with a pending trademark, you can initiate what's known as an "opposition" to prevent the registration. An opposition is a formal proceeding conducted by the PTO that is similar to a trial; you'll probably need a lawyer. (See Chapter 9.)
4. Formulate Your Search
The heart of all trademark searching is choosing the correct terms to search. Here are some tips for making the most of your trademark search.
a. One Term or Two?
With a Boolean search, you can look for one or two terms, which you enter as Term 1 and Term 2 on the screen. You may need to search for only one term. For instance, if your proposed domain name is MandalayLemonPies.com, you might want to search only for the word "Mandalay," the distinctive element of your name. If so, you would enter that word as Term 1, leave the Term 2 box blank, and then click Search. Or, if you wanted to search for all trademarks containing the term "lemon pie," you could enter that exact phrase—surrounded by quotation marks—as Term 1 and conduct your search.
TipYou can search for more than two terms. If you want to formulate a search that uses three or more terms, you can start with the Manual Search option instead of a Boolean search. It works the same way as does the Refine Search procedure, which is explained in Section 6 below.
b. Using Operators
If you enter terms in both the Term 1 and Term 2 boxes, you'll need to pick what's called an "operator" to connect them. You can choose among the operators AND, OR and ANDNOT.
If you select AND from the pull-down menu of operators, you are telling the search engine to pull up all trademarks that contain both of your search terms. For example, the search query "shark AND talk" will produce every trademark that contains both the word "shark" and the word "talk." It will not produce a trademark that doesn't have both words.
If you enter these same search terms, but select the OR operator (making your query "shark OR talk"), your search will produce a list of all trademarks with the word "talk" and all trademarks with the word "shark." Needless to say, that list would be very long, because so many trademarks are likely to have the word "talk" in them. However, this approach can be very useful if your proposed domain name contains two distinctive words and you want to review every trademark that has either word.
For instance, suppose you're considering the name AnalogAstromaps.com for a website featuring a series of star charts. You would most likely want to use the OR operator to search for any trademarks containing either "analog" or "astromaps." Any trademark with either term might knock out your proposed domain name if the context showed a likelihood of customer confusion.
The third operator—ANDNOT—is not nearly as powerful as the AND and OR operators. You can use the ANDNOT operator to exclude from the search results any term you enter as Term 2. For instance, you may decide that you want to see every trademark with the term "astromap" but no trademark with the term "starchart." This search query would look like this: astromap ANDNOT starchart.
There is actually one more operator, but it's rarely used. The XOR operator lets you search for any trademark that has either Term 1 or Term 2, but not both. For example, if you searched for "analog XOR astromap," your search would turn up trademarks with either "analog" or "astromap," but not trademarks that contain both terms. There is seldom a reason to exclude a combination of two terms—indeed, in this example, the combination would be the most important trademark to retrieve.
c. Focusing on the Most Distinctive Terms
Focus on the part of your domain name that is most distinctive, because it is that part of your name that would most likely cause consumers to confuse your name with an existing trademark using that term. For instance, if your proposed name is zoroasterdesigns.com, the word to use in your search is "zoroaster," since it is by far the more distinctive of the two words. "Designs" is a generic word that can be used in a lot of different trademarks without creating customer confusion. So although you should search for any mark that contains either designs or Zoroaster, you are primarily interested in Zoroaster. You would not want to search just for "zoroasterdesigns," because it is very unlikely that that particular word would show up as a registered or pending trademark. (And if it did, a search for "designs OR zoroaster" would turn it up, anyway.)
It is also wise to go a step further and search for marks that contain one or more of the distinctive syllables in your name. For example, if you want to use bioscan.com, you might want to look for trademarks that contain either "bio" or "scan," because you might turn up something similar like "biosearch" or "cellscan." But it wouldn't make much sense to search for marks containing syllables that wouldn't likely be used. For example, the syllables "gazoon" and "tite" are not nearly as likely to be used in existing marks as are "bio" or "scan."
TipDon't use the .com in your search. Even though you are looking for a possible conflict with your domain name, which probably ends with a .com, don't enter the .com in the search engine. Although an increasing number of domain names are being registered as marks, complete with the .com, it is the other part of the name (to the left of the dot), that will create any likelihood of confusion, and thus a trademark conflict. Adding a .com to your search will very likely produce a report that overlooks important marks you need to know about.
d. Searching for Phrases
You can use two or more words as a single search term. All you need to do is enclose the phrase you're searching for in quotation marks. For example, a sensible search for Mandalay Lemon Pies would consist of searching for both Mandalay and the phrase Lemon Pies. You would do this by entering Mandalay as Term 1 and "Lemon Pies," (including the quotation marks), as Term 2.
e. The Truncated Words Feature
When you search for a particular term, it's useful to also search for slight variations of the term—for instance, if you are searching for the word "saber," you'll want to know about trademarks using the British spelling, "sabre." The computer won't find these variants for you without special instructions.
Fortunately, it's easy to get the computer to search for slight variations. One of the options offered by the PTO's Boolean search is what's called "right truncation." Right truncation allows you to chop off as much of the right-hand portion of a word as you wish and have the computer search for all words that start with what's left. For instance, instead of wondering whether to search for "sabre" or "saber," you could search for all trademarks which contain the root segment "sab." This would pull up both variations of "saber," but would also produce unrelated terms, such as "sabbath." To create this truncation effect, simply put an asterisk at the end of the string of letters that you want to search, as in "sab*."
f. Searching for Sound-Alikes
In addition to searching for names that are similar to yours in appearance, it is also important to search for words that sound alike. For example, gazoontite.com and gesundheit.com don't look that much alike, but they sound identical and might well confuse customers.
5. Choose the Part of the Database to Search
After you enter your search terms and choose the appropriate Boolean operator, there is one further step to take. For each term, choose which parts (fields) of the database you want to search. There are a number of choices here; the online help explains each field. We recommend the default field, which is "combined trademarks." Combined trademarks includes the literal version of all trademarks, registered or pending, and a slight variation on the trademark entered in the record by the PTO when the variation is common. For instance, if the trademark uses the word term light, the PTO may also add the word "lite."
Trademark Searching: A Real-Life Example
Bob and Steve have played tennis together for many years. When they hit their mid-fifties, one or the other would occasionally show up with a minor injury (sore shoulder, tender elbow) that dictated a change of pace in the game. They invented some special rules to make the game more easygoing when one of them needed a break. Bob and Steve started to laughingly refer to the rules—and the game they produced—as "Geezer Tennis." Aha, a good title for a humorous book. And perhaps the term Geezer Sports might be used on a line of books and other products for aging athletes, which could be sold on the Web at geezersports.com.
Steve checks with NSI and finds that geezersports.com is available for registration. He then decides to use the PTO's trademark database to do a trademark search, to see whether Geezer Sports is available as a trademark. He chooses to search for both registered and pending trademarks, and enters "Geezer" as Term 1 and "Sports" as Term 2. He selects AND from the pull-down menu of operators and leaves the pull-down menu for fields on "Combined Trademarks."
The search results show no registered or pending trademark using "Geezer Sports." Now what? Steve takes another look at the proposed trademark and realizes that the distinctive part of the name is "geezer," and that "sports" is a generic term. In other words, if there are other trademarks out there using geezer, Steve should know about them, even if they don't also use "sports." Steve performs another search, this time using "geezer" as Term 1 and leaving the Term 2 box blank. This time, the search turns up five trademarks that use the word "geezer."
One of those trademarks is Geezer Golf. Uh-oh. Steve clicks Geezer Golf and discovers that Geezer Golf was registered in three international trademark classes: 016 (Paper goods and printed matter), 028 (Toys and sporting goods) and 035 (Advertising and business services). This means that the line of Geezer Sports books that Steve and Bob had imagined would fall into at least two of the same classes as those for which Geezer Golf is registered. (For more information about the trademark classification system, see Chapter 8, Section D.) Using geezersports.com might well confuse customers about articles sold on Bob and Steve's website and those identified by the existing trademark. (Customer confusion is discussed in Chapter 7.)
Bob and Steve are free to use geezersports.com as a domain name, because nobody else has claimed it. But because the name is so similar to a trademark that is being used in connection with similar types of products, the public might well be confused. This means that Bob and Steve probably couldn't get the name registered with the PTO—and even if they did, they might be sued for trademark infringement.
Alas, Steve and Bob give up on "Geezer Sports" but continue to enjoy their tennis rivalry. Maybe they'll come up with another clever name in the course of a particularly heated match.
6. Refine Your Search
After you get your results from a PTO search, you'll have an opportunity to refine your search. You can modify your search, either to broaden it if you received too few results, or to more narrowly focus your search if you received too many.
Probably the most important feature of the "Refine" or "Manual" search options is that you can combine Boolean operators. For example, suppose your proposed domain name is MiracleMediations.com. Using the Boolean search option as a starting place, you enter "mirac*" as Term 1 (truncating the term with the asterisk, to also search for "miracle") and "mediat*" as Term 2 (truncation lets you search for "mediate," "mediation" and "mediator" as well as "mediations"). You choose the AND operator to search for trademarks that contain both terms (plus the variations taken into account by the asterisk).
This search is a good start, but as you review your search results you realize that you want to search for trademarks that contain the word "arbitration" as well. To do this, you create a new search query that looks like this: "ms/mirac*" AND "ms/mediat*" OR "ms/arbitrat*." This search expression tells the computer that you want all trademarks that contain a variant of the truncatedterm "mirac*" and either the term "mediat*" or the term "arbitrat*."
The ms/ that precedes the truncated terms is what's known as a field code. The Manual/Refine search requires the use of these field codes if you want anything other than a "Combined Marks" search (the default search represented by the ms/). For instance, if you want to search for all marksowned by a particular company, you can use the field code "on/" in connection with the company's name. Similarly, use of the field code "gs/" lets you search for all marks that are used on goods or services containing the terms you use in your search query. For more on field codes, use the table that appears on the Manual/Refine search page and click whatever field code you wish to know more about.
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