Trademark law can protect indicators of the source of a product. These indicators can include company names, logos, slogans, certain graphic designs and colors. In some cases, trademark law can even protect a certain smell if customers associate that smell with a certain company.
In the internet age, one of the most important indicators of source is a company’s domain name. Companies want to make sure that when consumers type the company’s name into a web browser or click on a link, they will go to the site of the company they are actually looking for, and not to an imposter’s website.
That said, there are some quirks to the way trademark law applies to domain names.
Registration
To assert its trademark rights nationwide, your business should register its trademarks with the U.S. Patent and Trademark Office. This process involves searching to find if anyone else is using a confusingly similar trademark. If you find none, and the USPTO approves your registration, your rights in the trademark are generally limited to the area of commerce where your business operates. To take one famous example, the tech giant Apple has a trademark in its name when it comes to technology products, but it can’t stop produce sellers from using the word “apple” to sell the fruit of the same name.
A domain name is different. Each domain must be unique, and must be followed by a suffix, such as “.com” or “.org.” The full list of available suffixes is maintained by the Internet Corporation for Assigned Names and Numbers (ICAAN), a global organization.
Resolving conflicts
So, let’s say your business has already registered its name as a trademark, and now wants to start a new website. Unfortunately, you find that someone else has already registered your business name as a domain name for their own website. This might have been a registration from another, unrelated company that has a similar name, or it might be a “cybersquatter” — a person who beat you to registering the name and now wants you to pay them for the right to the domain name.
In either case, your options are limited. If the domain name is so similar to your trademark that it is likely to confuse consumers, you might be able to use trademark law to prevent the other party from using it.
You can avoid this problem if you get started early. At the same time you are doing the trademark search, do a domain name search.