Domain name and trademark availability aren’t interchangeable

Trademark Law0 comments

In the quest for the perfect business name, you’ll likely find yourself doing a lot of online research and sleuthing around to make sure you don’t infringe on someone else’s trademark.

(At least, that’s what you should be doing.)

If you’re like most people, there’s a good chance that search leads you to a domain name availability checker.

But there’s a problem with that.

The problem is that your domain name and trademark are not the same.

And the availability of one doesn’t dictate the availability of the other.

**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.**

Domain name ≠ Trademark

Trademarks are widely misunderstood.

But in a nutshell, a trademark is a unique identifier that allows your customers to know at a glance that the product/service they’re getting is coming from you.

Your trademark can take a lot of different forms, including words, logos, slogans, sounds, and colors.

Domain names are vastly different from trademarks.

A domain name is a unique name associated with an IP address. To be considered whole, a domain name has to be used with its suffix.

Those are the letters that follow the dot after the domain name, like “.com,” “.net,” “.org,” and so on.

In general, domain names are “first come, first serve.”

The first person to purchase a domain name retains the rights in the domain until they sell it or the registration expires. 

Even if the domain name is a trademark for someone else.

In which case, you can imagine there are instances of someone selecting a domain name in bad faith with the intention of luring potential customers to the website to purchase products they believe come from a competitor.

Or cybersquatting – when someone purchases a domain name for the sole purpose of prohibiting a trademark owner from gaining access to the name or to sell it for an exorbitant amount.

Not cool.

Infringing on another trademark

For our purposes, let’s assume the domain name owner had no ill intent when they purchased the name. 

They may not be acting in bad faith or cybersquatting, but they could still find themselves with legal issues.

How?

If the owner of the domain name starts to use it in a way that infringes on someone’s trademark rights, they could be facing a cease and desist letter, UDRP (Uniform Domain-Name Dispute-Resolution) complaint, or litigation.

Trademark infringement occurs when someone uses another company’s trademark on or in connection with goods and/or services.

And they do so in a manner that’s likely to cause confusion, deception, or mistake about the source of the goods and/or services.

In other words, you could potentially own a domain name that’s similar or even identical to someone else’s trademark without infringing on that mark…

As long as whatever you’re doing with that domain name is in no way connected to what the trademark owner does.

(And a lot of this will be determined by international classes.)

What business owners need to know

All of this is to say that you need to make sure that the domain name you plan to use isn’t at risk of infringing on someone else’s trademark rights.

And you do that by going back to the search we talked about in the beginning.

Once you’ve chosen a distinct name you feel good about for your business, you need to take it a lot further than a domain name availability checker.

You need to run a comprehensive trademark search and include as many different variations on the name as possible – to make sure there is no likelihood of confusion between your domain name and someone else’s trademark.

And once you’ve done that, you can look into registering your domain name as a trademark.

But that’s a discussion for another article.

Need help navigating it all? Apply to work with Nicole Cheri Oden Law.

 

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I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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