A domain name can become a trademark only if it is used as a trademark. Simply registering a word or words as a domain name does not itself establish trademark rights.
Remember, a trademark identifies and distinguishes the source of goods or services. The key is whether the trademark has been used to make such a visual impression that consumers would see it as a symbol of origin separate and apart from anything else.
The United States Patent and Trademark Office looks at the following factors to identify whether or not a designation is used as a trademark:
- larger-sized print,
- all capital letters or initial capitals,
- distinctive or different print style,
- and prominent position on label or advertising copy.
If the domain name is only used in the address for the website or as a link in correspondence, then it is not being used as a trademark.
Domain names are considered the equivalent of street addresses, telephone numbers, or radio station call letters. All of these are designations that permit one to locate and communicate with a place or person, but without more, such designations do not perform the function of trademarks.
So if you think the domain name for your company should be registered as a trademark, take a good look at how you use the domain name in the company marketing materials.
Ask yourself the following questions:
- Is the domain name in a larger sized print than the rest of the words on the page?
- Is the domain name distinctive or in a different print style or color?
- Is the domain name in a prominent position on a label or advertising copy?
- When people see the company domain name, do they identify it as the source of your company’s specific goods and services?
Register only marks that clearly distinguish your company as the source of the goods or services your company sells in commerce.