January 14, 2021
Did you know you can own a domain name and potentially be infringing on the rights of a trademark owner?
When entrepreneurs are launching a new business or brand, they spend a ton of time, effort, and resources on getting the business off the ground. However, if a business owner fails to perform sufficient due diligence, they may find themselves being the recipient of a cease and desist letter, or even worse, forced to give up the domain name of their new website.
Simply put, domain name ownership does not necessarily establish trademark rights, and trademark ownership does not necessarily give you the right to own the corresponding domain name.
Brainstorm Domain Names that Do Not Infringe
Before securing a domain name, I usually provide my clients with an overview of trademark fundamentals so they understand how to select a domain name that does not infringe on another’s trademark.
A trademark is a word, phrase, symbol or logo design, or a combination thereof, that distinguishes the source of the goods and/or services of one party from another.
The standard for trademark infringement is “likelihood of confusion,” and there are a number of considerations, including but not limited to, relatedness of the goods or services, similarity of the marks, appearance, sound, and meaning. For example, although they share a common name, there’s no likelihood of confusion between “Delta Faucets” and “Delta Airlines,” because when someone says "I'm flying Delta to Miami" nobody thinks they're chartering a faucet to South Beach for the weekend! However, the USPTO’s office would reject a trademark application "Delta Bathtubs" because that could reasonably create a likelihood of confusion with Delta Faucet’s brand. But, if available, someone could purchase the domain name for “Delta Bathtubs,” and find themselves in a bit of hot water (pun intended), should Delta Faucets get wind of it.
Thus, when choosing a domain name that doesn't infringe on anyone else's trademark, business owners need to choose a word, phrase, symbol, or logo (or some combination) that identifies its products or services and won't confuse potential customers.
Protected Trademark Classifications
When companies apply for a U.S. trademark, they’ll have to identify the class of goods or services for which its trademark will be used. The USPTO trademark classification system divides all goods and services into 45 trademark classes – 34 for goods/products and 11 for services. There are many goods or services in each class, and they’re not always obvious from the class name. For example, class 25 (clothing) includes aprons, dresses, t-shirts, socks, and shoes. Once selected, a company’s trademark will only protect the goods, services, and class it identifies in its application.
Trademark classification serves two functions: it provides a guideline for registering trademarks and can help a company identify potential trademark infringers. So, while a business may own the domain name, its brand is only protected within the defined class(es). Therefore, if there is a similar domain name to the business’s brand that does not create a likelihood of confusion with its elected class of goods and services, then the company may not have an issue of infringement and the domain owner is free to continue use of the domain name.
Trademark Clearance Search
In order to balance the need to identify a catchy domain name, while also respecting the rights of a trademark owner, a company should perform a comprehensive trademark search. And, the first place they should start is the U.S. Patent and Trademark Office (www.uspto.gov). Searching this database gives the company insight into all registered and pending trademarks. Companies should not only search for its proposed mark but also for other marks that are logically close, such as synonyms and variant spellings (eg: barbeque and barbecue).
If a business’s search turns up any names that are the same or similar to its proposed domain name, an entrepreneur should ask:
- Does our site offer goods or services that compete with goods or services sold under the similar domain name?
- Are we distributing goods or services in the same channels as the goods or services being sold under the similar domain name? This would be the case, for instance, if you plan to offer sports equipment on your website, and the owner of the possibly conflicting name sells sports clothing.
- Could our site divert business away from the site with the similar name? Is our domain name so similar to the other domain name that users might end up on our website by mistake?
If the answer is “yes” to any of these questions, there’s an opportunity for a legal challenge.
To ensure your company’s chosen or desired domain name does not infringe on anyone else's existing trademark, you or your attorney should perform a comprehensive trademark search (to include the identification of similar domain names) to make sure no one has trademarked the name or a similar name that might cause confusion with current and prospective customers.