Legal Question in Business Law in California

A trademark attorney will tell you to protect your mark by a trademark registration. Common law trademark rights arise on use, even in the absence of a registration. If a subsequent user tried to trademark your name, you can object to the registration. But it's better to be proactive and secure your rights.

A federal registration through the USPTO is the best, as it gives protection throughout every state in the U.S. As to what you actually protect, it depends on how your domain name is used. The USPTO says:

"A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier"

This means as long as your domain name is the name of your product and/or service, it's likely registrable.

For example, the online seller, Amazon.com, has a Federal trademark registration for Amazon.com because it's the name under which they conduct business. Take a look at their site and you will see that the name is always used with the .com extension.

On the other hand, the online insurance provider, Esurance, has a Federal trademark registration for Esurance because it's the name under which they conduct business. Take a look at their site and you will see that the name is always used without the .com extension. Consult with an attorney in your area for specifics.

Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise

Franchise Attorney

Consult with an attorney in your area for specifics.

Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise

Franchise Attorney

Yes, they sure can.

You should register the trademark, but no, a subsequent user of your trademark, even if they get it registered, can not prevent you from using your trademark (you can challenge the registration, within five years of registration, and get it cancelled). It all depends on first use, and it gets more complicated after that -- but, all things being equal, the first user will win in the end (but you'll spend a lot of money down the road enforcing your rights (which would include challenging the registration), so you should think of expenses to trademark now as an investment).

If the previous answers have left you a bit confused, let me try to give you some 'bullet points' to consider:

1. A domain name is not a trademark, not the equivalent of a trademark, and gives little or no brand-name protection, other than to use of the domain name itself, and even then a domain name owner can, under certain circumstances set forth in the laws against cybersquatting and cyberpiracy, be forced to give up the domain name. Such circumstances are rather uncommon and generally involve abuse of a well-known trademarked brand by an infringer choosing a domain name that was not taken by the owner of the well-known brand with intent to resell the deomain name or to skim off business. Possible example: "cocacoladeguatemala.com"

2. Many domain names cannot be trademarked because they do not meet all the requirements of trademark law. For example, the domain name may not be sufficiently distinctive, or it may not meet the use-in-commerce tests.

3. Domain names are unique; no name can be shared by two or more registrants for obvious reasons. Trademarks are not necessarily unique, in that the same trademark can be registered to more than one owner when the products or services fall into different international classifications. For example, a paint color could perhaps be registered as "Navajo White" and this would not prevent the same name from being registered as the trademark for a wine blend.

Your best advice is to determine whether your domain name meets the requirements of a trademark. If it does, then trademark it. If not, take steps to make it comply (such as using it in interstate commerce), or find a similar word or phrase and qualify it for trademarking instead,

An intellectual-property lawyer can give you odds on whether a proposed trademark will be accepted or rejected, and why, upon a brief interview.