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[rch1234]

Hi

Can I ask, is it standard practice to take out
a trademark appl'n on a domain name, if you are
going to use that name in a business capacity
i.e. as a trading website, selling goods/services
etc..?

Say I own a generic name, e.g. legal.com, that I
am wanting to use for a trading website. Now, I
am not concerned with registering a trademark on
the term 'legal' (which could not be enforced anyway)
but do I still have to TM the reference 'legal.com'
even 'though I own the domain name?.. And, is
it possible that someone else (other than me)
could successfully TM the domain addy, 'legal.com'?
Or, as this is obviously an internet domain name,
would the applicant first have to prove their
ownership of the name to the TM authorities?

Anyone have any experience/knowledge in this
area that they would be willing to share?

All the best

Richard

[JSonnabend]

The long story short is this: you cannot "trademark" a domain name unless and until you are using the domain name as a trademark.  Using the domain name (that is, the web address) solely as such will not qualify as a trademark use.  You must also be branding your services (or goods, I suppose) with the domain name.

Thus, if someone comes along and starts using your domain name in a trademark capacity before your use of your domain name as a trademark, that person will not only be entitled to use the domain name as a mark, but can stop you from doing the same.  That doesn't mean you can't continue to use the domain name, however.

Finally, as an aside, there is no reason why the term "Legal" could not be used and registered as a trademark, provided it wasn't being used merely descriptively.

- Jeff

[CM]

Jeff,

Can you please elaborate a little on what constitutes "trademark use"?

Can having a website on which a writer publishes his work (without selling it; the work is free for all) be considered "use of the domain as a trademark"?

Thanks.
CM

[JSonnabend]

Speaking loosely, if users of the website understand that the name of the site is "XYZ", then XYZ.com is likely protectable as a trademark.  Importantly, there must be some indicia on the webpage (excluding the address in browser) that brands the site with the domain name.  For instance, if you check out Amazon.com, you'll see that virtually every page includes the "Amazon.com" logo on the top.

While many sites are branded with the domain name, this does not necessarily have to be the case.  Amazon.com is clearly the brand and the domain, but if Amazon.com was also accessible at the domain 1234.com, the latter domain would not be protectable as a trademark.  In that case, 1234.com is just an address -- akin to a phone number -- but is not functioning as a mark.

- Jeff

[CM]

it makes sense. thanks a lot.

[steven]

I have a very similar question:

I have a start-up company "EXAMPLE.TV"  I will be using the domain name as my brand, so I intend to use "EXAMPLE.TV" on everything. My company will provide graphic design services, web design, and produce animation & film for dvd.

However, someone else has already got a trademark for EXAMPLE. They also have the domain EXAMPLE.com where they sell art, paintings on canvas. Their trademark is for "G & S: Art etchings, art pictures, art prints, printed art reproductions, and paintings." But, as far as I can tell, there has been no activity on the web site. They posted a few images of paintings but no way to purchase. Seems to be just an idea that was not pursued. (The trademark was registered in 2002.)

So, I need to know if I risk trademark infrindgement by creating my web site EXAMPLE.TV to promote my graphic design services? And, should I attempt to register "EXAMPLE.TV" as a trademark. It seems to me that by adding the .TV, the name is not the same. Also, my services are not the same.

Please help. Thanks.