In today’s tech age, you can scarcely find a business that doesn’t have some type of online presence. In fact, many “stores” are almost exclusively found online ― such as Amazon.com. Consequently, many traditional “brick and mortar” stores are finding themselves on the losing end of a battle between themselves and their online counterparts, given that online stores have much lower overhead costs.
In an effort to take part in this technological revolution, business owners routinely register new domain names in order to protect their spot on the internet. Many business owners believe ― often mistakenly ― that simply registering this domain name provides them some trademark protection in the domain name. This assumption can prove costly to a business owner as trademark litigation is likely to occur if they believe simply registering a domain is the same as a trademark.
Domain names and trademark priority
Disputes can arise when one business registers a particular domain name and another business subsequently attempts to obtain a trademark in the same words. Obviously, the company owning the domain name would like to object to the trademark application of the second company and protect its “rights” in the domain name. However, the first company can only protect the domain name, and stop the second company from registering the trademark, if it can show it has priority in the mark ― meaning it “used” the mark first.
Unfortunately, this question has yet to be expressly determined in the Second Circuit, but other circuits and Patent and Trademark Office decisions have concluded that simply registering a domain does not create trademark rights. In fact, an often cited Ninth Circuit decision ― Brookfield Communications v. West Coast Entertainment ― has expressly stated that registration of a domain name does not by itself constitute “use” for the purpose of establishing trademark priority, even if the company intends to eventually use the domain commercially.
This particular proposition was also recently recognized in an Arizona federal case in which a company had registered a domain name but still hadn’t created a website ― the domain name was simply used as a “splash page” filled with third-party advertisements.
Companies cannot make the mistake of not actually using a registered domain name. Ultimately, a domain name does not become a trademark unless it is also being used to identify and distinguish a particular source of services or goods.
The law surrounding domain names and trademark rights is quite complex and difficult to navigate. Even the slightest change in circumstances can determine whether or not a company actually has a protectable interest in a mark. If you are a business owner and you believe another company is using your intellectual property without your permission, or if you want to object to another company’s application for a trademark, contact an experienced trademark litigation attorney to be advised of your rights and options.