Updated: Feb 4
If you’ve picked a brand name or business name, you’re probably then hoping that the domain name is available. You’re lucky if it’s available. You purchase it and even go a step further and start making branding decisions and build strategies around the brand and domain name. So does that give you trademark rights in the brand name and domain name?
Trademark rights are established by use. That means you should be actively selling your goods and services to real customers across state lines. Sales to family, friends, employees don’t count towards establishing use. If you’re selling clothes and shipping them not only within your state but across the country, that could potentially qualify as sales across state lines. For goods or products, the use of the trademark must be shown either affixed to the goods or attached to them, like tags, labels, packaging. Similarly for services, simply offering the services through your website is not enough. You need to be working with an actual or real client across state lines. Someone who has purchased your services like website design services, or marketing services. The use of a trademark for services can be shown by having an interactive website. This is not achieved by just purchasing the domain name. The brand must be incorporated conspicuously on the website itself in association with the services. Registering a domain name doesn’t enable a customer to make purchases or connect it to your goods and services.
Here’s a real-life example. Masterful Matt is a businessman who makes and sells kids toys. He searched for the availability of the name Learning Curve LLC in California and registered it in February, 2020. He bought the domain name www.learningcurve.com. He was also using Learning Curve as his brand by labeling and packaging his toys with that name. His first actual sale to a real store was in California some time in June 2020. He also applied to register Learning Curve as a trademark in June 2020.
My client, Genius Georgie in New York, makes and sells board games for kids, and has been selling on Amazon and Etsy since February 2020. She applied to register Learning Curve as a trademark with the USPTO in March 2020. The domain name she got was www.learningcurvegames.com. She’d been selling and shipping a substantial number of products to customers all over the country and abroad under the Learning Curve name since February 2020.
Masterful Matt and Genius Georgie each have a trademark application for the same name for identical goods and services. Who do you think will get the trademark registration? Masterful Matt started and registered his business in February 2020 but didn’t start selling until June 2020. Genius Georgie started selling in March 2020 and was first to apply for the trademark. Masterful Matt objected to my client, Genius Georgie’s trademark application claiming that he started using the name first. But the problem was that Masterful Matt’s registrations were regional and his actual sales were after Genius Georgie’s. As a result, Genius Georgie secured trademark registration for Learning Curve.
Masterful Matt should have conducted a search to see if Learning Curve was not being used by anyone else before purchasing the domain name and using it as a brand name. Entrepreneurs tend to believe that once they purchase a domain name that the name is then available to be trademarked. Simply put, domain name ownership does not necessarily establish trademark rights, and trademark ownership does not necessarily give you the right to own the corresponding domain name.
If you want to avoid a situation like Masterful Matt, you should do a search before registering your brand, business name or domain name.
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