Category: Trademark

Domain Name Trademark Explained

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Domain name registration is a simple task by itself. All you have to do is just pick a domain name of your choice, make sure it is available and pay the registration fee to get the registration done. Although this is true in most cases, sometimes the domain name chosen by you can result in a trademark infringement which could ultimately lead to legal battles and expensive settlements.

Domain name trademark infringement can be avoided easily if you are aware of the basic pointers that should be kept in mind before registering domain names. This article aims at providing all the information you need about domain name trademarks, how to get the trademark for a domain name, conflicting domain names, trademark infringement etc.

Domain Name Trademark – What is it?

Domain names like Dell, Samsung, Lenovo or Canon easily qualify for trademark protection as they do not contain common words from daily life. If someone uses a Dell or Canon in their domain name without the approval from the owners of these trademarks, it leads to a trademark infringement.

If a domain name consists of commonly used terms like ClothingLine.com or FoodDelivery.com, then they do not qualify for domain name trademarks as you cannot stop people from using terms like food, delivery, clothing, etc., in their domain name.

How and when do domain names qualify as a trademark?

If your domain name consists of keywords or terms that are commonly used to describe your products or services, then it is unlikely to qualify for trademark protection. On the contrary if you come up with a domain name like konduit.com that is unique by itself, it is more likely to qualify for domain name trademark and you can notify the U.S. Patent and Trademark Office (PTO) of the intent to use the name in commerce as a trademark and apply for trademark protection. Although there is no legal requirement that you carry out a federal registration of your domain name as a trademark to use it for your business, it always good to register the name trademark to avoid unforeseen legal circumstances in the future.

According to a rule by the Ninth Circuit U.S. Court of Appeals, if a domain name has to qualify as a trademark, it should be in use by the businesses for commerce — that is, to sell goods or services — before it can be protected as a trademark. This means that you can get trademark protection for a domain name only if you are actively using it for commercial selling and buying of your products or services. If the name is not actively used and you just own it, it does not qualify for trademark protection.

How can a Domain Name be trademarked?

The process of registering your domain name for trademark protection is simple. However, as mentioned before, it is important to ensure before the registration that name indeed qualifies for trademark protection. The steps to trademark a domain name are listed below:

Do a trademark search

The first step to carry out before registering the domain name is to do a trademark search on the US Patents and Trademarks Office website. When you are sure that the name chosen by you does not clash with an existing trademark, you can search for its availability and register it for your business.

Fill an application for registering the Domain Name as a trademark

Once you register your domain name and use it for your commercial business, you can apply for registering it as a trademark with the US Patents and Trademarks Office. The government charges a nominal fee for filing and processing of applications. It is important to note that the fee charged by the government is applicable even if your application for a trademark gets rejected for conflicting with an already registered and existing trademark. It is always better to take extra care and ensure that the domain name you have chosen does not clash with an already registered trademark.

The Importance of Registering Your Trademark

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What is a Trademark?

A Trademark distinguishes the goods of one manufacture or trader from similar goods of other and therefore, it seeks to protect the interest of the consumers as well as the trader. It may consist of device depicting the picture of animals, human beings etc., words, letters, numerals, signature or any combination thereof.

Since it indicates relationship in the course of trade, between trader and goods, it serves as a useful medium of advertisement for the goods and their quality. The object of trademark law is to permit an enterprise by registering its trademark to obtain an exclusive right to use, share or assign a mark. Closely related to trademarks are service marks which distinguish the service of an enterprise from the services of other enterprise.

Trademark helps in inaugurating a Brand name

  • It helps consumers to distinguish your products and services from that of your competitors.
  • It indicates the quality of your products and services.
  • Establishing the brand and earning goodwill is supported by registering your trademark.
  • It enables to get the name “Branded goods” which will add on the value of your product.
  • Advertising the product will reach easily if your product holds an attractive trademark.
  • It serves as the most efficient commercial tool that establishes the identity of your product.
  • Holding a registered trademark significantly increases the value of your brand to potential purchasers, and hence any purchaser of your business is likely to pay much more for the goodwill that is built.

Trademark serves as an Asset

  • Trademarks are one of the few Assets that provide a long-term competitive advantage.
  • It is the only business Asset that will get appreciated in value over time.
  • It provides value beyond the core business and an pave the way for expansion of the business.

Trademark – a communication tool

    • Trademark helps to register the product among the consumers which helps them to differentiate and select the desired product.
    • Trademark wraps a series of technical issues in a single logo such as:
      1. Company
      2. Reputation
      3. Products and services
      4. Consumers need
    • Trademarks will work across borders, culture and language.

Trademark increases sales volume

  • Trademark helps to find out the significant differences among competing products.
  • The brand can be an important factor to drag the consumer’s attention.

Trademarks are relatively inexpensive to protect

  • After successful registration of trademark it has an infinite lifespan by renewing it and the expenses are less when compared to other intellectual properties.
  • Trademarks are often the top-of mind address for an Internet user which helps the consumers to identify your product easily.
  • Trademark gives the consumers the ability to protect themselves by relying upon known brands of products and services.

Trademark also assures the owner as it helps him to protect his own product from other competitors even if they similar. The owner can protect his trademark by taking legal actions against his reviles if they try to infringe his own trademark. When once a company registers its trademark ownership it will have an exclusive right to use it nationwide and for all the products that are listed in the registration.

The trademark acts as a prima facie evidence of its validity once registered and gives an exclusive right to the owner to use the trademark in the commerce field.Registration of trademark prevents others from using your trademark and hence it is important to register it. In the event of anyone trying to infringe your trademark the owner can fight back legally only when your trademarks is registered.

 

Trademarking the Name of a Band

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Most musicians know about copyrights. Without copyright protection, other musicians and music companies might claim your songs as their own, reap profits from them, and even sue you if you perform your own compositions. Many musicians are not aware that a similar calamity can befall a band that does not properly establish and protect trademark rights in the name it chooses.

Band names and logos as trademarks

A trademark is any word, phrase, symbol, sound or design that is used in commerce to identify the source of goods or services. Music recordings are goods, and entertainment is a service, so a name that is used to identify the source of a song or the musicians who perform it is a trademark. For example, the name, “Smashing Pumpkins” is a trademark that is used to identify a particular band’s sound recordings and musical performances. It is also a trademark for posters and shirts displaying that phrase.

Copyright law does not protect names, titles or short phrases. Registering a copyright for a collection of songs with the band’s name on the cover may protect the band’s rights of authorship in the music, but it will not protect the band’s name. For that, trademark registration is needed.

Logos are a special case. If a logo is an original work, then the artwork may be copyrighted. When it is used to identify a particular band, then it may also be protected as a trademark.

How trademark rights are created

Trademark rights are created by using a name or symbol in connection with goods or services to identify the source of the goods or services. Merely deciding on a name for a band is not enough, even if the name is written down on a piece of paper, witnessed, notarized, and kept in a safe deposit box. Trademark rights come into being only when the band takes the further step of putting the name on a product (such as a CD, or a digital recording that is made available for download on the Internet) or an advertisement for the product, or publicly performs or advertises its entertainment services under the name.

Trademark rights can come into existence without registration. As between two bands with the same name, the first to use the name in commerce to identify the source of their musical products or services (such as affixing the name to a CD that is offered for sale, or using the name in an advertisement or flyer for a concert performance by the band) will be the one with trademark rights.

Why registration is important

Since trademark rights are linked to first use, some websites offer to protect a band’s name by simply listing the name in a band name registry. While this can generate some evidence of use, it is not determinative of the issue, and it is not sufficient for trademark protection. Only registration with a state or federal trademark office will establish a prima facie case or a legal presumption of trademark ownership.

Registering your band name with the U.S. Trademark Office creates a strong presumption that you own the trademark rights in that name. Subject to some exceptions, it usually will be all the evidence of ownership you need for your defense if another band attempts to sue you for using a name that it claims is confusingly similar to theirs. And it will enable you to file suit, if necessary, to prevent other bands from using your name, or a name that is confusingly similar to your band’s name.

The stakes are high. Being ordered to stop using a name is not the only thing that can happen to a person who is successfully sued for trademark infringement. He may also be ordered to destroy or surrender any products that have the infringing name affixed to them; to disgorge any profits that have been made through the use of the name; and to compensate the trademark owner for damages. In some cases, he may also be ordered to pay punitive damages and the trademark owner’s attorney fees.

How to Choose a Trademark Professional

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Search for specialised professionals: You should search specifically for a trademark professional, rather than a regular law professional. Check to see that your trademark expert is well-versed in Australian trademark law. A trademark professional can provide you with specialised advice on trademark searches, trademark registration, and trademark management.

Choose professionals with experience: There is nothing more valuable to you than a trademark expert with experience in the field. Trademark matters concerning your intellectual property require precise navigation and a sound depth of knowledge. An experienced professional will best be able to advise you on protecting your trademark. You should also search for professionals who have experience that is specific to your industry, or experience in business.

Look for professionals with good reputations: It is essential that the trademark expert you hire has a solid foundation within the industry, accompanied by a good reputation for service and success. Search for firms that are established within their industry. You should ask around for references, or contact the clients of different firms to ask them about the level of service they received.

Search for professionals with connections: Your trademark professional must be well-connected in order to ensure that your mark achieves registration without complication. A well-connected trademark expert can guide you through the registration process and provide you with legal advice in regards to protecting your trademark rights, and continuing trademark management.

Why Hire a Professional?

You should hire a trademark professional if you are considering using your mark in relation to your products and services, as you will require registration to protect you intellectual property. A trademark professional will file the relevant application: whether you want to register a mark that is already in use, or whether you wish to ‘reserve’ a mark intended for use in conjunction with your products and services, you should contact a trademark professional for advice.

If you are already using a trademark, you should hire a professional to conduct trademark searches to ensure that you are not infringing on anyone else’s rights, and therefore are vulnerable to legal ramifications. A trademark professional can assist you in making decisions concerning your marks before you encounter any problems. You should especially contact a trademark expert if you are already aware of potential issues concerning your marks.

You should also contact a professional if you wish to register any of your marks as trademarks. A trademark professional will be able to assist you in drafting and filing your trademark application, as well as navigating the entirety of the registration process, including legal action taken against you or adverse reports that you are issued.