Trademark 101: Registering domain names as trademarks

I am often asked about whether a domain name can be registered as a trademark.

The answer is Yes – a domain name can be registered as a trademark or service mark with the U.S. Patent and Trademark Office (“USPTO”), subject to certain qualifications (although these qualifications actually apply to non-domain name trademark/service mark applications as well).

First and foremost, in order to be registered as a trademark/service mark, a domain name, like any trademark/service mark, must serve as an actual identifier of a source of goods or services. If the mark would be perceived as nothing more than an Internet address where the applicant can be located online, then the USPTO will refuse registration. The mark, as shown in the specimen of use submitted to the USPTO (advertisements, product labels, etc.), must be presented in a manner that will be perceived by ordinary consumers to indicate source and not as merely an informational indication of the domain name address used to access a web site. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998). An applicant’s intent, hope or expectation does not determine whether the mark functions as a mark. See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960).

In addition, because advertising one’s own products or services is not deemed to be a “service” for which an applicant can obtain service mark protection under the Lanham Act, a domain name which hosts a web site used by business for the sole purpose of advertising its own products or services cannot be registered as a service mark for such a service (e.g., where a domain name service mark applicant claims that its services are “providing information in the field of . . .” but in actuality, the website merely serves to advertise the applicant’s underlying goods or services).

Finally, any application to register a domain name as a trademark/service mark is subject to the same basic statutory restrictions to which all trademark/service mark registration applications are subject. The average consumer familiar with the Internet recognizes that every Uniform Resource Locator (“URL”) (i.e. web address) contains both “http://www” at the beginning and some top-level domain (“TLD”) at the end (e.g., “.com,” “.net,” or “.org”). As such, neither of these two parts of a domain name serve any kind of source-identifying function, and thus their addition to an otherwise unregistrable mark typically will not render the resulting domain name registrable. See In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records and for tracking the status of the records by means of the Internet).

If a domain name is composed of merely descriptive terms, then the PTO may refuse registration under §2(e)(1) of the Lanham Act (15 U.S.C. §1052(e)(1)), on the ground that the mark is merely descriptive. If a domain name is composed of generic terms, the then the PTO may refuse registration under §2(f), 15 U.S.C. §1052(f) on the ground that the mark is generic. While the rule is that the addition of “http://www” and/or a TLD to an otherwise unregistrable mark typically will not render the resulting domain name registrable, the Federal Circuit has stated that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a TLD. See In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (STEELBUILDING.COM highly descriptive, but not generic, for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems”).

If a domain name is composed of just a surname, then the PTO may refuse registration under §2(e)(4) of the Lanham Act (15 U.S.C. §1052(e)(4)), on the ground that the mark is primarily merely a surname. If a domain name is composed of geographic terms, then the PTO may, depending on how the geographic term is used, refuse registration on the grounds that the domain name containing a geographic term may be:

• primarily geographically descriptive under §2(e)(2) of the Lanham Act (15 U.S.C. §1052(e)(2));
• primarily geographically deceptively misdescriptive under §2(e)(3) of the Lanham Act (15 U.S.C. §1052(e)(3));
• deceptive under §2(a) of the Lanham Act (15 U.S.C. §1052(a)); or
• merely descriptive or deceptively misdescriptive under §2(e)(1) of the Lanham Act (15 U.S.C. §1052(e)(1)).

However, for an applicant facing domain name rejections based on §2(e)(1) merely descriptive or deceptively misdescriptive, §2(e)(2) primarily geographically descriptive, or §2(e)(4) primarily merely a surname, the applicant can try to show acquired distinctiveness under §2(f) of the Lanham Act (15 U.S.C. §1052(f)).

In short, in order to ascertain whether a domain name can be registered as a trademark/service mark, the applicant must first determine whether the second-level domain name, by itself, would be registrable. If so, then the applicant must determine if the domain name has been promoted in commerce in a way that the domain name serves as a source identifier (rather than just a source of information about the applicant or the applicant’s goods and services).