When Can You Trademark a Domain Name
A trademark is defined as a name, symbol, logo, motto, design or combination of these that distinctively and legally identifies an organization and/or its products. If the organization is a service organization, the entity is called a service mark. Therefore, if you use your domain name in commerce or intend to do so, your domain name may qualify as a legal trademark or service mark.
Steps to Trademark a Domain Name
As with any other situation in which you are considering registering a trademark, you should begin with a trademark search to find any possible conflicts. Do this before reserving the domain name to avoid registering a domain name that is already trademarked. There are two ways to conduct the search. Go to the U.S. Patent and Trademark Office (PTO) website (http://www.uspto.gov/web/offices/ac/ido/pssd/index.html). Alternatively, you can hire someone who is experiences in such matters to conduct the search on your behalf. This may be particularly helpful if you want to use your trademark outside of the United States, as other searches besides PTO may need to be done.
Next, you should fill out a trademark application, which you can find on the PTO site, along with a description of the process, and other useful information
(http://www.uspto.gov/web/offices/tac/doc/basic/). Note that there is a fee involved for this process. If you already have a domain name, and are just now beginning the registration process, you can use the ™ or SM symbol. The ® symbol means that the trademark is registered and cannot be used until PTO approval is gained.
The PTO has different applications depending on your situation: one for a mark that is in current commercial use, second for a mark that you plan to use in commerce, but haven’t yet used, and third for those who reside outside the United States. Check the PTO website for other filing details.
The PTO will respond after about 20 weeks with information on whether the trademark can be registered. Registration lasts 10 years and is renewable, but there is a mid-term process required to continue the registration. Again, look for details on the PTO site.
The other side of trademarks and domain names is that it is possible to register a domain name that conflicts with a registered trademark held by someone else, even though this may be done unwittingly. Domain name registrars do not keep track of these issues. Since the trademark registration pre-existed your domain name, by purchasing it, you have become the owner of a property that infringes the trademark.
While domain name acquisition, development, and reselling—sometimes called “domaining”—is an accepted business practice, cybersquatting is not. Cybersquatting refers to the acquisition of trademarked names, names that are similar to trademarked names, and typographical errors likely to occur in trademarked names and existing URLs. This latter practice is referred to as typosquatting.
Federal law (Anticybersquatting Consumer Protection Act) prohibits buying, selling, using, or registering domain names in bad faith with the intent to profit from someone else’s trademark. While cybersquatters may believe that they will be able to to sell the name back to the trademarking company or individual at a great profit, they are more likely to be prosecuted.
In order to avoid cybersquatting and/or the appearance of cybersquatting, it is worth doing a trademark search before obtaining a domain name and keep a record of your search. In this way, even if you should ever innocently infringe on a trademark, you will be able to document through the search that you acted in good faith and did not intend to profit from someone else’s trademark.