Can I Register A Trademark Domain Name If I Never Use It

• Posted on: February 3 2022

Past: David Ludwig [2/4/22]

Trademark rights and domain proper noun buying overlap in many ways, merely they are non the aforementioned. Domain name ownership does not necessarily found trademark rights, and trademark ownership does not necessarily give you the right to own the respective domain proper noun.

I am frequently approached by clients who have received a cease and desist letter related to their website or domain name who were surprised to learn that someone tin still accuse them of trademark infringement despite the fact that they own the domain name containing the trademark at issue. Similarly, I have also been approached by clients who have recently received a trademark registration who believe that the trademark registration allows them to seek turnover of the respective domain name. There is quite a flake of misunderstanding regarding the interplay between trademark rights and domain proper name ownership.

What is a trademark?

In social club to fully empathize how trademark rights and domain name ownership bear on one some other and differ, information technology helps to start with a basic understanding of both. In full general terms, a trademark (also sometimes referred to equally a "service mark") is any name, logo/blueprint, or slogan used to promote a business concern. A business concern does not need to register the trademark to have rights (but registration does offering more than robust rights). Rather, trademark rights arise whenever a mark is "used in commerce" -whenever the name, logo, or slogan is used in connectedness with the products or services offered by the visitor in such a way as to create an association in the minds of consumers connecting the mark with the company. Every time a can of Coca-Cola® is placed on a grocer's shelves, or every time a box of french fries displaying the McDonald's® "golden arches" logo is handed to a hungry child, those famous trademarks are being "used in commerce." Accordingly, a trademark is something that makes a connexion in the minds of consumers between a particular product or service and the company that provides that production or service.

Once trademark rights are established, they are non absolute. For instance, McDonald'southward® would take difficulty using its trademark rights to preclude another company from using the same proper name for an information technology (Information technology) consulting business (although for very famous marks, the trademark dilution doctrine might be used to prevent such uses). This is because trademark rights are limited non only past the mark but as well by the blazon of products or services that the marker is used in connection with. This is why there can be a prominent national airline and also an unrelated company selling plumbing equipment that both practise business concern under the name Delta.®

What is a domain proper name?

A domain name, past contrast, is a string of characters that serves as an identification string for internet addressing purposes. When a domain name is typed into a web browser, there are rules and procedures of the Domain Proper name System (DNS) that tell the browser the location of the server where the corresponding website files are hosted. Appropriately, a domain proper name is something that makes a connection for internet users between a specific string of characters and the location of the owner's website content files.

When does a domain proper noun bear on trademark rights?

The brusk answer is "never"—a domain proper name, by itself, cannot confer any trademark rights on the domain name possessor. This is considering a domain name, past itself, does non create a consumer clan between a company and its products. However, a business concern's website that advertises or sells the company'due south products or services can create this blazon of consumer clan. In this sense, nonetheless, the content of the website itself creates trademark rights, non necessarily the domain name.

When does a trademark affect domain name rights?

In general, domain names are a "first come, commencement served" commodity. The first person to purchase a given domain name retains the rights to the proper name until information technology is sold or the registration term expires. This is generally the example fifty-fifty when the domain name is a trademark. If I happened to register starbucks.com before the coffee visitor, the java company may accept to post its website at a different domain proper noun address until my registration expires.

Withal, at that place are certain exceptions to this rule. "Cybersquatting" is when a person registers a domain proper name containing a trademark without a legitimate purpose and but to prevent the trademark owner from having it (or re-sell it to the trademark possessor at a steep turn a profit).

In cases of cybersquatting, a trademark owner tin seek the render of a domain name that contains a trademark. At that place are a couple of different procedures to reach this. Still, in general, a trademark owner must prove that the domain name was registered in bad faith and with the intent to profit from the trademark at issue and that the domain proper name is confusingly similar to the trademark at event.

In determining bad faith, a court or other tribunal will consider the strength of the trademark owner's rights whether

• the domain proper name owner has any legitimate merits to the proper name,
• the domain name has been used for legitimate business purposes,
• the domain name possessor has displayed an intent to divert customers away from the trademark owner'due south site,
• the domain name owner has offered to sell the name for a turn a profit, or
• the domain name owner has registered multiple domain names that are similar to registered trademarks, among other things

A trademark owner can recover an improperly registered domain proper noun in these situations.

Although there are significant areas of overlap betwixt trademark use and domain names, the two sets of rights differ both in how they are caused and how they bear on i another. A business with an online presence should pay careful attention to both sets of rights when edifice a make and investing in online advertizement.

To acquire more than about Dunlap Bennett & Ludwig and how we aid yous, contact us past calling 800-747-9354 or emailing clientservices@dbllawyers.com.

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Tagged with: domain infringement, Domain Proper noun, Trademark, trademark infringement, trademarks

Posted in: Net, Trademark

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David'south exercise focuses on civil litigation in the areas of patent, trademark, copyright, internet / domain names, commercial transactions, government contracts, community associations, and bankruptcy police force / creditors' rights, as well equally trademark and copyright prosecution, and corporate and modest business law. He is co-chair of the firm'southward litigation group, supervising several lawyers, and he has served as an chaser for local and national clients in federal and state court litigation and mediation matters, also as in defalcation proceedings, TTAB disputes (trademark Detect of Opposition and trademark Petition to Cancel proceedings), domain proper name disputes (ACPA, UDRP, and URS proceedings), government contract bid protests and Tucker Human action litigation, and numerous other forums and proceedings.

To learn how Mr. Ludwig can assist you with your legal needs, click here.

Source: https://www.dbllawyers.com/trademark-use-and-domain-names/

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