Background Behind Domain Name Trademarks
Technically, most names and certain words are supposed to, and usually do, fall outside the protection of trademark laws. First names, common/generic words, and last names are a few examples of this. But, names like Coca-Cola, Ford, and G.I. Joe are protected if used in the same context.
While you wouldn’t consider the name Ford to be trademarked, it would be protected if you were to sell cars or products they do with that name on them. You could, realistically speaking, create the domain fordtrucksarebad.com, but you could still wind up in court because of trademark name dilution if you sold products from that site as well – or defaming a trademarked product name by selling similar products.
Tips to avoid lawsuits
So before you start searching for that perfect domain name, dedicate yourself to some serious research. Check for other online companies or products which have the same name. If the company you’re creating a website for is called Benchmark Computers, make a search for other businesses or products with an online presence in that name, especially those who have registered their name with the U.S. Patent and Trademark Office (PTO).
A trademark is, according to U.S. Code, a word, symbol, or phrase used to identify a particular manufacturer or seller’s products and distinguish from the products of another.
The words, symbols, or phrases fall into several categories: Arbitrary or fanciful, suggestive, descriptive, and Generic.
Arbitrary or fanciful bare no relationship to the products they represent. Symbols like the Apple on Apple brand computers, the “A” for Adobe products, and tidal picture for Tide fall into this category. You can use the name Apple, Adobe, or Tide in your business name or product, but only if the business or products are not like the others with the same name.
Suggestive is a mark or word which “suggests” a characteristic of the product. Hefty is merely a suggestive term to describe the plastic bags they produce.
Descriptive marks and words directly describe the characteristics or quality of the product. However, unlike the previous two, descriptive marks are not distinctive to the products they represent. They must also acquire a secondary meaning, which means that the words or mark must be associated with the maker of the product instead of the product itself. One A Day, while only describing how many vitamins one must take, has become associated with Bayer HealthCare LLC.
Generic marks and words are merely a general category which products belong to, and are not protected by trademark laws. You couldn’t trademark the word energy for example.
One thing you need to remember though. Because of the nature of the internet, any website or product which has registered with the PTO should be considered trademarked. In the past, a business could trademark a name like Washington Computers within a city because they are located on Washington Street. All computer businesses within that city who used that name in association with computer sales before registering would retain the right to use it, but not after. If that same business were to register that trademark name with the PTO with the intent to use it commerce, they would have the right to use the name anywhere in the U.S. Anyone else wishing to use that name would not be able to.
International trademark laws are a little bit trickier, but mostly follow the same rules. The only difference is that an infringement case would be heard and tried in an international court.
Basically, pick your business or product name with care. One little thing could blow up in your face, and land you before a judge. Most small businesses don’t have the disposable capital to fight a lengthy court battle, and usually wind up having to close before a settlement is reached.
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