Your Domain Name as Your Trademark? Maybe, says USPTO

During the dot-com boom of the late 1990s, companies were being formed and funded as quickly as possible. In this process, domain names were either being registered or purchased from others. Since there is little to stop knock-off or imitating companies in many dot-com startups, legal maneuvering was often employed. One tactic is to register your company name — which was often your company’s domain name — to prevent imitators from using a similar domain name.

After a deluge of trademark filings at the U.S. Patent & Trademark Office (USPTO), they decided to issue guidelines that would explain exactly when a domain name may or may not be registered as a U.S. federal trademark.

Below are some interesting excerpts:

If a mark is composed of a surname and a TLD, the examining attorney must refuse registration because the mark is primarily merely a surname under Trademark Act §2(e)(4), 15 U.S.C. §1052(e)(4).

If a proposed mark is composed of a merely descriptive term(s) combined with a TLD, the examining attorney should refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive.

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance.

The examining attorney should examine marks containing geographic matter in the same manner that any mark containing geographic matter is examined. Depending on the manner in which it is used on or in connection with the goods or services, a proposed domain name mark containing a geographic term may be primarily geographically descriptive.

Generally, for domain name marks (e.g., COPPER.COM), the applicant may add or delete a TLD to the drawing of the mark without materially altering the mark. A mark that includes a TLD will be perceived by the public as a domain name, while a mark without a TLD will not. However, the public recognizes that a TLD is a universally-used part of an Internet address. As a result, the essence of a domain name mark is created by the second level domain name, not the TLD. The commercial impression created by the second level domain name usually will remain the same whether the TLD is present or not.

Similarly, substituting one TLD for another in a domain name mark, or adding or deleting a “dot” or “https://www.” or “www.” to a domain name mark is generally permitted.

In analyzing whether a domain name mark is likely to cause confusion with another pending or registered mark, the examining attorney must consider the marks as a whole, but generally should accord little weight to the TLD portion of the mark.

Download and/or read the full guidelines published by the USPTO:
USPTO Examination Guide 2-99 Domain Names