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.