In our digital age, a business' domain name (or web address) is key to standing out in the crowd.  Once a business acquires its domain name, it is sound business practice to secure a trademark registration for that domain name, so as to prevent others from creating similar domain names that could potentially cause confusion.

Though securing a trademark registration for a web address that specifically includes the business' name (i.e., www.lcojlaw.com) is relatively simple, where businesses are increasingly finding difficulty is in securing a trademark registration for a company's web address in which the domain name only includes a "generic" reference to a thing or service.  Unfortunately for some businesses, the United States Patent and Trademark Office has routinely held that web addresses such as "hotels.com" or "lawyers.com," which are commonly referred to as "[THING].COM or [SERVICE].com" trademarks, cannot be protected under federal trademark law.

The general rule for granting a trademark registration is that "the mark must be capable of distinguishing the applicant's goods from those of others."  The primary argument for denying trademark applications for [THING].COM domain names is that the "thing" in question is usually a generic term that is descriptive or non-unique, and thus cannot be distinguished.  Thus, only if the applicant can show that the generic or descriptive term used in the domain name has "secondary meaning," specifically in relation to the applicant, will a trademark registration be granted. 

  

For instance, the domain name www.people.com would be considered a generic [THING].COM web address - after all, "people" is as generic a term as you can get.  However, because People Magazine can establish "secondary meaning" for the term "people," the domain name is protectable.  Absent an established "secondary meaning," though, the trademark applicant may very well be out of luck.

The moral of the story is that if your business presently uses a "generic" domain name, that domain name could cause more problems than benefits.  If you would like to discuss your present domain name and the steps your business can take to ensure that it is protected from potential misuse, please contact one of the attorneys in our Intellectual Property team at Liebmann, Conway, Olejniczak & Jerry, S.C.   

The IP Team at Liebmann, Conway, Olejniczak & Jerry, S.C. understands you have invested time and money in the development of your ideas, inventions, work product, processes, brands and trade secrets - your intellectual property.  We also understand that, regardless of the size of your business, managing and protecting your intellectual property assets are essential to the success of your business. 

Liebmann, Conway, Olejniczak & Jerry, S.C.'s IP Team can assist you in protecting your intellectual property from infringement and unfair competition.  We provide intellectual property audits to aid with identifying your intellectual property  and assessing appropriate means to safeguard it.  We offer IP registration services to support you in protecting and maintaining your intellectual property.  Our intellectual property litigation services include representation before the United States Patent and Trademark Office, Trademark Trial and Appeal Board, Copyright Office, and in federal and state courts regarding intellectual property infringement, misappropriation, unfair competition, and related actions.

We are a full-service, proactive group with the know-how and experience to protect your intellectual property and help you maximize its potential benefits.