How to register a domain name as a trademark

There are some wonderfully weird things out there that are successfully registered as trademarks.

Things like:

–The Aflac Duck quack

–The shape of a Coke bottle

–Tiffany’s robin-egg blue color

–Hasbro PlayDoh’s distinct smell

–Even the way Yamaha’s Waverunners vertically spray water

So if you can register sounds, shapes, colors, smells, and…water spray? (this is a “movement trademark, by the way) you must be able to register a domain name as a trademark.

Right?

Well, here it comes…

It depends.

Such a lawerly answer, I know, so let’s look at what it depends on…

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Defining a domain name

First, what is a domain name?

You likely already know that it’s a unique name associated with an IP address. In other words, it’s the big black X-that-marks-the-spot on the map of the internet where your business virtually exists.

To be considered whole, domain names have to be used with their suffix.

Those are the letters that follow the dot after the domain name.

.com

.net

.org

And so on. 

These suffixes can also get really specific depending on geographical areas. 

For example

You might own mydomainname.com, but someone else could own mydomainname.ca (Canada’s unique suffix) or any of the other suffix endings for the same root domain.

Pro Tip: if it’s economically feasible, consider snagging a domain name and all the available suffixes to prevent other third parties from using them.

Finding the right domain name to register as a trademark

Most online businesses find it useful to have a domain name that reflects the name of their business (or the products or services it provides) so potential customers and clients can easily remember the name.

Which means the domain name may be descriptive.

And if the domain name is too descriptive, it may not qualify for federal trademark registration. 

A descriptive mark requires a secondary meaning that makes it distinctive to qualify for registration on the Principal Register.

And marks don’t acquire a secondary meaning unless they’re continuously used in commerce for a long period of time in a substantially exclusive manner.1

…What does this even mean?!

Let’s use DeGidio v West Group Corp2 as an example:

In that case, the Plaintiff owned the domain name “lawoffices.net,” which provided an attorney directory, legal information relating to cyberlaw issues, a vanity email service, listings of domain names for sale, and a hosting service for legal-related websites. 

Defendants used the domain name “lawoffice.com” to market the West Legal Directory, an online resource providing legal information for businesses, professionals and general consumers. 

The Plaintiff asserted trademark protection for LawOffices.net, but did not actually own either a federal or state trademark registration for the LawOffices.net designation. 

The Court ultimately decided that “LawOffices” as used by the Plaintiff in its domain name, was too descriptive to be entitled to trademark protection.

Successful trademark registration of a domain name

The most well-known successful trademark registration of a domain? 

Booking.com 

After a lengthy court battle, the U.S. Supreme Court found that consumers perceived the term “BOOKING” as a brand name – as opposed to a generic online hotel reservation service – and granted trademark protection. 

This paved the way for many domain name trademark registration filings to follow. 

If you’re hoping to federally register a domain name as a trademark, here’s your best bet for success:

1. Look for a distinctive domain name.
2. Work with a trademark attorney for a thorough analysis.
3. Purchase as many available suffixes as economically feasible.

You can apply for your consultation with Nicole Cheri Oden Law anytime for guidance that will help increase your odds of successfully registering your domain name as a trademark.

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1. 15 USC §1052(f)

2. (6th Cir 2004) 355 F3d 506, cert denied (2004) 542 US 904