| Once you register a domain name, others cannot use | | | | some cases can be fatal. One of my clients was sued |
| it as their web address. A domain is a lot like a street | | | | by Amazon over his use of for computer services. |
| address or location on the Internet. However, this | | | | He innocently registered the domain and put up his |
| does not automatically mean you can register it as a | | | | site with a picture of the Amazon River. At about |
| trademark protected by the federal government for | | | | the same time, established its site and was selling |
| your products and services. Whether it can also | | | | only books. Because he failed to "stake out his claim" |
| function as a legally protectible brand that adds value | | | | to the term for computer services by securing a |
| to your business depends on what you choose, so | | | | federal trademark, Amazon turned into a trademark |
| choose wisely. | | | | bully and sued him 10 years later. He was forced to |
| The answer often depends upon whether you have | | | | sell for a fraction of what it was worth, as he could |
| chosen to market your products or services under a | | | | not afford to fight the lawsuit. |
| generic or highly descriptive domain. Generic and | | | | Once you have a term in a domain that qualifies as a |
| descriptive terms are not normally protectible as a | | | | trademark, the key requirement is that you offer |
| trademark. A great example is which spent a fortune | | | | goods and services for sale, not merely provide an |
| in 2007-2008 trying to convince the Trademark Trial | | | | "informational" site. |
| and Appeal Board and Federal Circuit that it has | | | | An informational site describes you and what you do |
| acquired "secondary meaning" in the domain. They | | | | or sell, but does not actually deliver services or |
| failed because no matter how much they promote or | | | | products online. For example, an attorney was |
| market the term, it will still be generic for what the | | | | refused registration of because the site merely |
| consumer finds at the site. | | | | showcased his services. |
| On the other hand, valuable brands on the Internet | | | | If you provide services online through your site, the |
| are not generic and descriptive. A domain such as | | | | Trademark Office will grant registration. For example, |
| EXPEDIA.COM® is registered and protected as a | | | | the ability to sign up for courses or workshops online |
| strong trademark because the owner actually | | | | is a service. |
| provides services through the website. EXPEDIA may | | | | Other examples of registerable websites include |
| suggest but does not describe what is being offered | | | | online banking services, online chat rooms, online retail |
| at the site. Google, eBay, and Amazon are all domains | | | | services, real estate marketing services with virtual |
| turned famous trademarks because their owners not | | | | tours, and hosting web sites of others. |
| only registered the term as a domain, but chose a | | | | It is up to you to decide. I believe if one is going to |
| term that could also be distinctive for trademark | | | | spend the money to market and promote goods and |
| purposes. | | | | services online, it is wise to have a term that can be |
| If you are going to invest money into creating and | | | | protected as a trademark as well as a domain. |
| promoting a website, you should adequately protect | | | | Whatever you decide, choose based upon an |
| the domain name as a trademark. It is insufficient to | | | | understanding of the difference between the two. |
| simply secure a domain name registration and in | | | | |