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The Zest

You Can Trademark a Domain Name, but Only If It's Doing a Brand's Job

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Yes, a domain name can be registered as a trademark, but only when it works as a brand name and not just as the address where people find you. Copyright isn't an option: the Copyright Office doesn't register names, and it lists domain names specifically. And you don't "trademark a website" as such. You protect the name on it with trademark law and the content on it with copyright.

A domain registration isn't a trademark

When you register a domain, you're renting an address from a registrar. That keeps anyone else from holding that exact address while you pay for it. It doesn't, by itself, give you any right to stop someone from using a similar name for a similar business.

Trademark rights come from using a name to identify the source of goods or services. The USPTO's examining manual, the TMEP, applies that same test to domain names: a mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. If customers would see it as nothing more than an internet address where you can be contacted, it isn't working as a mark.

How the USPTO tells an address from a brand

The examining attorney looks at your specimen, the real-world example you submit to show how the name is used, and asks how an ordinary customer would read it. What you intended doesn't control.

Two decisions the TMEP relies on show the line. In one, a lawyer applied to register WWW.EILBERG.COM and submitted letterhead and business cards showing it alongside his other contact details. The Trademark Trial and Appeal Board found that the term merely indicated the location on the internet where his website appeared, so it didn't function as a service mark. In the other, "irestmycase" was used only as part of a web address and with other contact information, and it didn't function as a mark for legal services either.

The TMEP's examples of use that fails are familiar ones: a line like "visit us on the web at" followed by the domain, or the domain sitting next to a phone number and street address on a business card. Use that tends to work looks like any other brand use. The name appears prominently, set apart, as the name of the business or product.

One more wrinkle for service marks: you have to be offering a real service to others under the name. The TMEP notes that advertising your own products or services isn't a "service" under the Trademark Act. A website that only promotes what you sell doesn't create a separate service to register.

The ".com" usually adds nothing

The USPTO's general position is that neither the "http://www." at the front nor the generic top-level domain at the end, like .com or .org, has source-indicating significance. Everyone understands those pieces are part of every web address.

That has two practical effects. First, the distinctiveness of a domain name mark usually rests on what's left when you take the ending away. If the rest of the name is strong, the mark is strong. If the rest merely describes what you sell, adding .com usually doesn't fix it. Why descriptive names struggle is the subject of why "best" names make the worst trademarks.

Second, some businesses register the name without the ending, since the name itself is what customers remember and what competitors would imitate. Whether to include the ending in an application depends on how you actually use the name.

The TMEP does leave room for exceptions. It says that in some circumstances a top-level domain may have source-indicating significance, which has become a live question as brands and industries get their own domain endings. I wrote about the newest round of those in the new domain endings round.

What Booking.com changed for "generic.com" names

The USPTO's position was that a generic word plus .com is itself generic, outside of exceptional circumstances, and so can't be registered. Booking.com tested that, and in 2020 the Supreme Court disagreed with the USPTO.

In United States Patent and Trademark Office v. Booking.com B.V., decided June 30, 2020, the Court held 8 to 1 that a "generic.com" term is a generic name for a class of goods or services only if the term has that meaning to consumers. Because the lower courts had found that consumers didn't perceive "Booking.com" as the name of a class of services, the term wasn't generic and was eligible for registration.

The decision is narrower than it's sometimes made out to be. The Court said it wasn't adopting a rule that automatically classifies such terms as nongeneric. Each one depends on how consumers in fact perceive it. The TMEP now tells examining attorneys to assess these case by case, using evidence like dictionaries and usage by consumers and competitors.

So a name like yourproduct.com, where "yourproduct" is the common name of the thing you sell, isn't automatically barred. But it still faces a steep climb. It has to be shown that consumers see the whole term as one company's brand, and that kind of proof generally takes real marketplace recognition. The Court also acknowledged that descriptive marks are weaker, meaning fewer similar uses by others will count as infringing.

The Copyright Office is direct about this. Its Circular 33 says words and short phrases, such as names, titles and slogans, are uncopyrightable, and it lists a domain name or URL among the examples. The same circular notes that names and short phrases may be protectable under trademark law instead.

Your website's content is a different matter. Original text, photos, graphics and video on a site can be protected by copyright, and the Copyright Office's circular on websites explains how those are registered. It also says domain names and the layout or "look and feel" of a web page aren't copyrightable. I laid out the split between the two systems in trademark, copyright or patent.

So do you need to trademark your domain or website?

Nothing requires it. You can run a website without any trademark registration, and using a name in business can create some rights on its own.

What a registration adds is leverage over the name itself. The federal law aimed at cybersquatting lets a mark owner go after someone who, with a bad faith intent to profit, registers, traffics in or uses a domain name that's identical or confusingly similar to the mark. Having a registered mark can make it simpler to show you're the owner in that kind of fight. How those disputes work, including what to do when someone already holds your domain or handle, is in Someone Has Your Domain or Instagram Handle.

Building software or an app? See how the name check works for SaaS.

If you're weighing whether your own name is worth registering, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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