Can You Trademark a Domain Name?

The well-crafted words that make up your business’s domain name can be eligible as a trademark, if certain requirements are met. Just bear in mind that registering and using a domain name does not automatically grant you trademark rights.

Trademarks and domain names are distinct concepts though they can both play an integral role in your business or brand.

• A domain name is a unique, human-readable web address (like domainregistry.com) that retrieves a global IP address. Domain names are universally registered through an ICANN-accredited registrar for set amounts of time.

• On the other hand, a trademark is a recognizable sign of a company’s brand, registered federally through the USPTO, that persists as long as the owner uses it.

If you’re looking to strengthen your brand identity by trademarking some (or all) of the words that make up your domain name, you’ll need to prove consumers recognize those words on their own as an identifying part of your brand.

If this concept strikes a chord with your business model or goals, keep reading. It’s important to protect your business on every front, after all.

 

The Basics – Domain Names vs. Trademarks

Domain names and trademarks are acquired from different agencies, provide various rights, and impact each other differently. But where they intersect, things can get complex.

Let’s untangle these concepts, and take a closer look at how trademark rights are acquired.

Domain Name – A human-friendly web address, linked to an IP address, that takes a user to a specific website. Domain names aren’t linked to any tangible object, and are not considered intellectual property.

Domains are a “first come, first serve” commodity. Once you’ve registered a domain name, it’s yours and only yours—as long as you renew your registration each year.

Trademark – Any word, phrase, symbol, or design that identifies a particular brand of goods and/or services, protected by intellectual property rights in the US.

Trademarks are territorial by country, and exist so long as you continue to use the trademark in ordinary business activity.

Domain ownership – do I automatically have trademark rights?

No, domain ownership does not, in itself, give you trademark protection or intellectual property rights to the words found in your domain name. Even if you own the domain name for 100 years. These two things are governed by different systems with separate functions.

So, when can I actually trademark the words in my domain?

You’ll have the best chance to trademark the words within your domain name once you’ve met a few USPTO conditions:

1. The words in your domain name include invented, arbitrary, or suggestive words that clearly identify your company, instead of generic or descriptive words.
   
2. You’ve actively used your domain phrase throughout your marketing and commerce.
3. You’re able to gather evidence, such as invoices, marketing materials, commerce paperwork, and anything else that connects your domain name and your brand, to showcase your domain name in action.

Demonstrating your domain name wording as familiar and distinct instead of just a random collection of words is key, and will prove it stands out from the crowd as trademark-worthy.

Competitor trademarks in your domain name—who’s in the right?

The enduring response to this type of question: it depends. It ultimately depends on whether you’re acting in “bad” or “good” faith in registration of domain names.

Acting in “good faith” means acting with basic principals of honestly in dealings with others. On the other hand, registering in “bad faith” means being purposefully misleading in your dealings with others. Bad faith intent might look like:

• Registering a similar domain name with the sole purpose of attracting visitors or using another person’s trademark to trick consumers.
• Registering domain names with the intent to profit—by reselling them at a disproportionately high rate.

A trademarked word in your domain is usually not enough of a driving force to make you give it up. It matters how the domain is used. People acting in “good faith” are generally fine.

Can someone else take my lapsed domain name?

Yes, and they can usually keep it as long as they’re practicing “good faith” and not impeding on your business activity.

That said, domain impersonation is a digital crime that can seriously harm your reputation as well as the lives of your consumers. Keep an eye out for copycats and fraudsters.

 

Reasons you should (or shouldn’t) trademark your domain name

When your domain name is inherently distinctive of your brand alongside your business name or slogan, instead of just part of your URL, the protection offered by a trademark helps you establish legal rights and enhance your credibility. So trademarking a domain name often times isn’t necessary. We’ll go over a few reasons why it is—or isn’t—advisable to trademark your domain name.

Why most people don’t trademark their domain

For a majority of owners, there are two discernible reasons for not pursuing a trademark for their entire domain name (including the extension).

1. The root domain (the word or words right before the dot) is the same as the business name, which is trademarked.

It makes the most sense for business owners to register a domain name close to their business name, often with a minor tweak or addition such as location-identifying words (“NYC,” “PNW,” etc).

In this case, it makes more sense for business owners to focus on protecting their business name rather than the domain name.

2. The domain name isn’t used in marketing, and therefore is not recognizable on its own to the consumer.

When a domain name isn’t present enough within the business activity and commerce to have that familiar customer association with the brand, it more than likely won’t be approved by the USPTO.

Protecting your domain name when it matters

Then again, businesses who’ve connected their domain name phrase to their brand in a significant way might have a USPTO-approved case on their hands.

For example, if you’ve made your domain name reflective of your business slogan, and have used this slogan significantly throughout your marketing—look into some trademark protection sooner than later.

 

USPTO vs. Booking.com – can a TLD help signify your brand?

Since there’s no law against mimicking a TLD within a business name, companies have the freedom to craft a name that can be registered as a trademark.

Example: Booking.com

This company’s official business name is “booking.com.” It’s in their logo when you visit their site, and they’ve expressed this fact in their advertising since inception. After a long Supreme Court battle in 2020 between the company and the USPTO, booking.com proved that consumers think of their exact company when they hear that phrase.

This article is just the tip of the iceberg in the world of domain names and trademarks.

ICANN and other organizations launch new unique top-level domains (like “.dad“ and “.kids”) every month. With the growth of new TLDs, there will be more attempts from companies to secure trademark rights for the words appearing in their domains. This means new domain-related trademark rules and regulations. Check back here for regular updates!