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In determining whether to register your domain name as a trademark, it is important to be sure that your domain name is not merely an address, but acts as a source identifier for your particular good or service. The domain name must not primarily be a surname, without some evidence of secondary meaning, and must not be primarily geographically descriptive or misdescriptive. When registering your domain name, it is important not to register the http://www portion of your domain name, and it is typically advisable to leave off the top-level domain name, such as .com or .biz from any registration. Such top-level domain names do not add additional uniqueness to your registration sufficient to overcome a similar mark, but may be held to limit the scope of your protection against subsequent infringers.
In determining infringement of trademark in the context of the worldwide web, the analysis is similar to that used in any other trademark analysis. Courts look at not only the similarity of the marks in sound, meaning and appearance, but also the similarity of goods or services used in association with the marks, the similarity of trade channels, the sophistication of the associated buyers, the relative strength or weakness of the marks, and the existence or absence of any actual confusion in the minds of the consuming public.
If a court finds a trademark has been infringed, the available remedies include an injunction, as well as the trademark owner’s damages or the infringer’s profits associated with the usage. In the case of a federal registration, as noted above, willful infringement may lead to treble damages and attorney fees in exceptional cases. Filing a federal trademark application requires a governmental filing fee which currently fluctuates between three and four hundred dollars. The application is short, but usually requires the aid of a trademark attorney to address questions of first use of the trademark, appropriate international class for filing and the identification of the goods or services. After filing, an examiner at the United States Patent and Trademark Office reviews the application and typically responds twelve to eighteen months after the initial filing.
Although in rare cases the Examiner immediately grants the application on the first round, the Examiner’s first response is usually a denial based upon some real or perceived defect in the application. A skilled trademark attorney also comes in handy at this point in addressing complex trademark issues, such as “merely descriptive,” “likelihood of confusion” and “secondary meaning.” If the response to the Examiner’s rejection is successful, and the Examiner agrees that the application is in order, the Trademark Office publishes the application for a thirty day opposition period to give the public a chance to object before the trademark issues with a full federal registration. The federal trademark registration process usually takes about two years and costs around twelve hundred dollars.
