Legal Question in Intellectual Property in California

Re: Trademark Name - Websites

Conventional wisdom is to prefer the basic company name rather than the domain name, at least for small businesses. This is as a result of the use-in-commerce requirements at the PTO; an example might help to illustrate.

Suppose you are making and selling a product (could also be a service) under the unique name "Widgetette," your newly-developed nanowidget, and it's getting to be a pretty hot item so you decide you'd better register the name. But you also advertise and sell Widgetettes on line on your newly-ICANN-registered site, www.widgetette.com. Which should you register, or maybe both?

Since the USPTO will not register a trademark unless you can show that you are using it in commerce, better start with "Widgetette" alone. First, it is indisputable that you're using it in commerce. Second, under the evolving rules against cybersquatting and cyberpiracy, you have some protection against anyone registering a deceptively-similar domain name, e.g. "www.widgetette.net." Also, perhaps more important, no competitor could make nanowidgets ans sell them under ANY name that could be confused with Widgetette, so the additional trademark is superfluous for most small businesses.

Furthermore, there is some doubt that our hypothetical company is using the domain name "widgetette.com" in commerce. Merely registering a domain name or using it as your Web address does NOT in and of itself amount to "use in commerce." More is required - the company would have to use the domain name prominently in its advertising, labeling, etc. so that the domain name as well as the more basic product name was also closely identified with the product.

Note that the PTO considers top-level domain terms such as .com, .net, .org unprotectable, adding another dimension of doubt to whether there is any value in registering the name with the extension if you already have the basic portion wrapped up. When all is said and done, if your potential customers are likely to identify your services with the domain name and you don't mind spending the time and money to file a second registration application, go ahead and do so after you can show use in commerce or intend soon to use it heavily in interstate commerce.

Re: Trademark Name - Websites

As a threshold matter, a website name would be a service mark and not a trademark. A trademark would be applicable if you were selling a "widget" as opposed to a service, which is what a website would be. A trademark or service mark is intended to designate the "source" of goods/services. Domain registration is a completely separate issue. An intellectual property attorney can provide you with better direction regarding the best mark to register, if you only intend to register one mark, once after discussing your website plans. Before taking that step, you may want to go to the United States Patent & Trademark Office website at uspto.gov and search through the TESS search engine to roughly determine if your proposed mark is already taken. You may also want to check the secretary of state's website to see if the name is being used for business entities.