This article deals with domain proper name registration and "utilize in commerce" requirements, mostly. It is not legal advice on your private situation and may non be relied on as legal advice. Each situation will exist fact-specific and there is no one-size-fits-all communication. Contact an attorney to discuss your specific trademark.

In today's digital age, almost prospective business owners desire an easy-to-remember-domain name. Considering good domain names can be and then deficient, y'all, every bit a prospective concern owner, may think of a name, andimmediately buy the domain names. You may even make branding decisions based on the availability of that domain name. Despite what some business concern owners may think, trademark rights do non brainstorm with a domain registration. While this may seem counter-intuitive at offset, registering a domain name, without more, does not give business owners any trademark rights in that word or phrase against companies that use a like name for similar goods or services after the domain name is registered.

Concern owners should file for trademark registrationsas soon equally possible and develop a strategy to effectively protect their trademarks.

Trademark rights are based on actual commercial utilize, not domain registration.  So what is "commercial utilize"?

One of the tenants of trademark law is that trademark rights in the United States are based on use.While that may seem simple, the "use" in the legal sense might not hateful what you remember. So what does "utilize" mean in the context of trademark law?

For products (e.chiliad. cell telephone cases, apparel, consumer electronics)

For products, "trademark employ" ways that y'all are regularly selling products to real customersacross state lines.What "regular" means will depend on your industry. If you sell i airplane engine every year, you may still take utilise. If yous sell one cell phone example every year, yous might not have use. "Existent customers" means that you can't sell products to friends, family, or employees for the purpose of establishing trademark utilise. "Beyond state lines" is considering trademark law is a federal law, significant that, in order for Congress to regulate information technology, it needs to effect "interstate commerce." In that location aremany manyintricacies at to what is, and isn't interstate commerce (then contact a trademark attorney to learn more than.)

Where you place the trademark matters too. The trademark, whether its a word, phrase, or logo, needs to be used as a brand in connection with the product. Typically, this ways on the tag, hang-tag, product itself, production packaging, or like place you would await to see a "make." At that place are a lot of exceptions and other considerations, and so talk over with a trademark attorney regarding your specific trademark in your specific industry.

For services (east.g. business organisation consulting, marketing firms, blogs)

For services, "trademark utilise" means you have "rendered" your services to real customers beyond state lines. For example, if y'all have a blog, and then your "apply in commerce" begins when regular readers outset reading the blog from around the Us. If you have a marketing firm, your "use in commerce" may brainstorm after you get-go piece of work for an interstate client. This is important, because offering services is not enough. Clients, customers (or in the case of a web log, readers) only be using the service.

The exception to this is "reserving" rights with the USPTO through an "intent-to-use" application, which allows y'all to "reserve" rights for upward to three years, so long every bit you have an "intent to use" the trademark in commerce on your specific appurtenances and services.

Domain proper noun registration is not, past itself, a "commercial use" or "trademark apply"

All of this is to say that domain name registration, by itself, does non hit whatsoever of the best practices listed above. Registering a domain name does non connect it to specific goods and services. It doesn't offering anything for sale or let a customer to purchase your products.

The Trademark Manual of Examination Procedure states that:

When a marking appears in the computer browser area as part of the URL, Internet address, or domain name of the website that houses the web page, consumers more often than not do not recognize this every bit trademark apply. Instead, this use only identifies the Internet location of the website where concern is conducted and goods or services are offered. See, east.chiliad., In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008) (concluding that the marker IRESTMYCASE, which appeared as function of a website address, www.irestmycase.com, on applicant'southward specimens, merely served as a contact accost to attain the applicant and failed to office as a service mark for bidder'south services); In re Supply Guys, Inc., 86 USPQ2d 1488, 1493 (TTAB 2008) ( "[A]pplicant's use of the term LEADING EDGE TONERS as office of the cyberspace address, www.leadingedgetoners.com, . . . identifies the website where applicant conducts its retail sales services. Patently, a website tin can exist used for multiple purposes and the simple fact that a term is used as role of the internet address does not mean that it is a trademark for the appurtenances sold on the website."); In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998) (finding that the mark Www.EILBERG.COM, when displayed in relatively small and subdued typeface below other contact information on applicant'southward letterhead, merely indicated the Net location of bidder's website rather than functioning equally a service marking for applicant'south legal services). Similarly, the apply of the mark embedded in an eastward-post address would be viewed equally office of the website address where bidder may be contacted, rather than as a trademark.

Example of how bodily commercial use beats domain registration for trademark rights

So why is this important? Imagine that on January ane, 2017, Jonathan registered "lightninglanterns.com," and files a DBA as "The Lightning Lantern Company." Jonathan also does a corporate name search with his state and registered Lightning Lanterns, LLC as a business concern proper noun with the state of Virginia. He and then starts planning his line of flashlights to be sold online and at camping stores.  On April 1, 2015, three months later on, he starts using the name Lightning Lanterns equally a trademark and sells 500 lanterns to a regional outdoors store. He applies to register LIGHTNING LANTERNS for lanterns with the U.S. Trademark Role a few months after.

On March ane, 2017, Olivia begins selling LIGHTNIN' LANTERNS, loftier-powered flashlights to hundreds of customers in the U.s.. On the same day, she also files to annals the LIGHTNIN' LANTERNS trademark with the USPTO and successfully registered the mark nine months later. Olivia has never heard of Jonathan and did not know virtually his plans.

In this scenario, Olivia would likely exist the owner the LIGHTNIN' LANTERNS trademark in the U.Southward. and, generally, will be able stop a third-party from using any confusingly like trademark for similar products and services. She would likely exist legally entitled to stop Jonathan from using the LIGHTNING LANTERN trademark for his flashlights, even though he registered his domain name, registered his LLC and filed a DBA in Virginia. None of these filings gave Jonathan any trademark rights in the phrase LIGHTNING LANTERN and Olivia "used" the trademark first in the market.

Conclusion

There are a lot of important decisions that need to be made when starting a business and proper evaluation and federal registration of a business'southward trademarks needs to be loftier on that list. Otherwise, a business owner may demand to spent fourth dimension and money, losing customer recognition and needing to first from scratch. The attorneys at Gerben Police force Firm provide low apartment-rate trademark packages that include a comprehensive search and expert analysis of trademarks. Contact Gerben Law Firm today for a complimentary consultation.