I received an email a few days ago about developing a domain name acquisition strategy. The author indicated that I should choose a word that describes my business or product and then register this word and all its misspellings. This procedure is fine if a company wants a domain name that's merely an online address; however, the method is quite shortsighted if a company also wants its domain name to be its identifying trademark or brand name. Dot-com companies, like their brick and mortar counterparts, must plan for the long term if their businesses are to thrive and prosper. Adopting and maintaining strong trademarks or brand names should be part of this long-term plan.
Trademarks Defined
A trademark is a "word, name, symbol, device, or any combination thereof" adopted by a company to distinguish its goods or services from those of others (see the amended Lanham Trademark Act of 1946). Further, trademarks indicate the source of the trademark owner's goods or services. Trademarks and service marks are forms of shorthand that let people easily find a company's products or services. When people go to the supermarket, they search the shelves for Coca-Cola. They don't look for that brown, cola-flavored, carbonated soft drink produced by that beverage company in Atlanta. A service mark is used in much the same way to identify and distinguish one company's services from another's. (I'll use the words "trademarks" or "marks" to refer to both trademarks and service marks.) Trademarks come in many forms, for example, words such as Yahoo! or eBay, slogans like, "Don't leave home without it," logos like the NBC peacock, music like the NBC chime, or product shapes like the Coca-Cola bottle.
Your right to a trademark begins as soon as you use a mark properly in commerce, or when you file an Intent to Use application with the United States Patent and Trademark Office (USPTO). (See " Online" for a list of all URLs mentioned in this article.)
Trademark law protects the consumer from deception and protects the trademark owner's identity (goodwill, reputation, advertising, and financial investment) by giving the owner the exclusive right to use the trademark on goods already associated with that mark. Trademark rights may extend to related goods or services depending on the strength of the mark, but don't necessarily extend to all goods or services. For example, the trademark Cadillac for dog food doesn't infringe on the trademark Cadillac for automobiles. Trademark rights last as long as a mark is used correctly in interstate commerce to identify the owner's goods and services.
Choosing a Strong Trademark
The more distinctive a term, the stronger it will act as a trademark. The strongest trademarks are fanciful or arbitrary. A fanciful mark is a term that has been invented for the sole purpose of functioning as a trademark and has no meaning other than acting as a mark, such as Kodak for photographic prints. An arbitrary mark is a term that has a common meaning with no relation to the goods or services being sold, such as Apple for computers. Next on the spectrum are suggestive marks. A suggestive mark is one that evokes or suggests a characteristic of the underlying goods but doesn't specifically describe the underlying product, for example, Microsoft for microcomputer software. The weakest trademarks are descriptive terms. If a term is descriptive (surnames and geographically descriptive marks fall within this category), it can only serve as a trademark once it has developed secondary meaning. Secondary meaning means the public associates the descriptive mark with a particular producer of a product. This can be achieved through long-term use, and/or large amounts of advertising and publicity (such as with McDonald's for drive-in restaurant services). Generic terms actually name a product and can never act as trademarks.
If you want to market your goods or services on a global scale, note that in many countries, descriptive trademarks, surnames, and geographic names are difficult or impossible to register, even if they're already registered in the U.S. This is because the laws and policies concerning trademarks in other countries are different from those in the U.S.
Once you've chosen a trademark, you should contact an attorney to obtain a trademark search and an availability opinion. This search covers federally registered marks, state-registered marks, various media, and other sources to ferret out common-law uses of marks. You don't want to adopt a trademark until you receive the results of such a search, and an opinion from your attorney that your mark is available and won't infringe on an existing trademark. Follow the same policy before you register a domain name.
When searching for a product online, people will either enter a URL that includes a company's name, or they'll turn to a search engine. If a market includes companies with strong trademarks, people will search for these trademarks instead of the generic terms for the items they seek. Because of this tendency, companies with strong trademarks that sell commodities online obviously have a huge advantage over other companies in the same market. Amazon could carry every book ever written, but without a strong and famous trademark, few people would visit its site.
Trademarks might be even more important online than they are in the brick and mortar arena. A bookstore in a small town may have little or no local competition, and it will automatically have a group of loyal customers. If townspeople forget the name of the bookstore, they only have to drive down Main Street and look out their car window to find the store. On the other hand, an online bookstore must compete with all other online bookstores. A trademark may be all that sets you apart from other companies. Therefore, online companies should adopt strong trademarks and obtain domain name registrations for all their marks, and for common misspellings of these trademarks.
Wording that merely describes your product can be your alternate domain name, so you can catch people who aren't yet aware of your trademark. However, if your primary domain name and the name of your company is a generic term for the goods or services you provide, you'll never build a strong trademark or brand name. Regardless of how much money you spend advertising your goods or services, you'll never successfully persuade the public to associate a generic term solely with your company. Moreover, you won't be able to prevent others from using your name to describe their goods. If you sell books, you obviously can't prevent other booksellers from saying they sell books or from identifying their goods as books. Choose a name that's generic, and your advertising dollars might end up benefitting your competitors as much as they benefit you.
Proper Use of Trademarks
Trademark rights must be protected. A valid trademark can become generic if the public misuses the mark to such an extent that the mark becomes the generic term for a product. Therefore, it's important to develop trademark use guidelines that teach employees, licensees, and others how to properly display your marks.
A word mark should always be used as an adjective. If you develop a new product or service, you must create a generic name for the product in addition to a trademark (for example: Yahoo search engine). If you fail to create a generic name, your trademark may become the generic name for your product. If a company consistently uses a trademark as a noun, a verb, or the generic name for its product and lets others do the same, the company risks losing its trademark rights. Some of you may remember the Xerox Corporation's advertising campaign that included the wording: "You can't Xerox a Xerox on a Xerox. But we don't mind at all if you copy a copy on a Xerox copier." The Kimberly-Clark Corporation used a similar advertising campaign wherein it emphasized that its product was Kleenex brand tissue. In both cases, the companies were able to save their trademarks from becoming generic terms. On the other hand, the developers of aspirin and the escalator were not as vigilant, and their trademarks became the generic names of the products they created.
To maintain the strength of a mark, you should always present it in the same manner. Avoid altering the mark's look and spelling, or using abbreviations of the mark, unless these variations are also adopted as trademarks (for example, America Online and AOL).
After you obtain a federal registration, always use the trademark symbol (®). It should appear at least once per page on a Web site or any other medium where the mark is affixed. The symbol should be placed by the first use of the mark on each page. Prior to registration, you should indicate ownership of trademarks and service marks by placing a superscript "TM" next to trademarks and "SM" next to service marks. Word marks should always be displayed in all capital letters, in italics, or in some other manner or typeface that makes the trademark stand out from the rest of the document. [Editor's Note: Many magazines (including this one) dispense with the all-caps per house style.]
Additionally, you should indicate ownership of your trademarks by including a notice of trademark ownership at the bottom of the first page of your document or Web site, or by providing a link to a trademark notice. If you own a federal registration, the notice should include something similar to the following: "XYZ is a federally registered service mark of XYZ, Corp." If you're using a mark, but you don't have a federal registration, rephrase the statement as, "XYZ is a trademark owned by XYZ, Corp."
Trademark Enforcement
Trademark owners are responsible for policing their trademarks. You should adopt policies to monitor all media for evidence of infringing marks. An infringing mark is one that's confusingly similar to your mark in such a way that the other party's use creates a likelihood of confusion, mistake, and/or deception with the public. The confusion can be that the other party's products are the same as yours or that the other party is somehow associated with you. You should pay particular attention to the similarities between the other party's marks and your marks, and between the goods and services each of you offers. If you discover another party using a mark you believe is confusingly similar to any of your marks, contact your attorney immediately. You must be willing to enforce your trademark rights by any means necessary, including sending cease and desist letters, negotiating licenses, and sometimes even litigation. You should, therefore, keep records of certain trademark-related information, such as a record of the first day you use a trademark in commerce, and copies of documents evidencing such use (for example, copies of advertising, archival copies of Web pages, and so on). Documentation of all your expenses concerning trademarks (for example, advertising expenses) should also be maintained. Your attorney can review your documentation to ensure that you're using your marks correctly and can advise you regarding specific record-keeping and document-retention requirements.
Domain Names and Trademark Infringement
Domain name disputes are the most common type of trademark disputes on the Internet. In addition to traditional trademark litigation, there are two relatively new vehicles for enforcing your trademark rights in your domain name: the Uniform Name Dispute Resolution Policy and the Anti-Cybersquatting Consumer Protection Act (ACPA). If you own a trademark, but another party has registered the mark as a domain name, your attorney can advise you as to the best course of action.
The Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy in 1999. Under the new ICANN rules, disputes against cybersquatters can be decided through arbitration. A complainant must prove that the domain name at issue "is identical or confusingly similar to a trademark or service mark in which the complainant has rights, the domain-name registrant has no rights or legitimate interests in respect to the domain, and the domain name has been registered and is being used in bad faith." If a trademark owner wants to obtain a domain name, online dispute resolution typically makes sense.
To state a claim under the ACPA, a plaintiff must establish that its mark is distinctive or famous; that the defendant's domain name is identical or confusingly similar; and that the defendant used, registered, or trafficked in the domain name with a bad-faith intent to profit from the sale of the name. The Act provides a nonexhaustive list of nine factors used to identify domain name owners acting in bad faith. However, to protect those legitimately using certain domain names, the Act also instructs courts to look into whether the domain name owner has its own separate trademark or other intellectual property rights in the domain name. The Act also includes a provision for statutory damages. Note that the Act states that there's no bad faith when the domain holder believed, and had a reasonable basis for such a belief, that the use of the domain name was legal. Therefore, obtaining an opinion from an attorney that a domain name is available could shield you from damages pursuant to this Act.
Metatags and Trademark Infringement
If you're a trademark owner, be vigilant in protecting your trademarks. Regularly conduct online searches to ensure that no one is infringing on your marks. If you do a search for your trademarks and reach a site with no visible use of your marks, check the metatags. The same rules apply online as offline. The deceptive use of your trademark in another company's metatags is actionable as a form of trademark infringement.
One court described the confusion caused by this type of infringement as "initial interest confusion." (For more information, see Playboy Enterprises, Inc. v. Calvin Designer Label. The infringer sought to benefit from the goodwill the trademark owner had developed in his trademark by diverting potential customers from the trademark owner's Web site to the infringer's site. The court reasoned that once at the infringer's site, the consumer might simply make his or her purchase there, rather than continue searching for the trademark owner's site. Even consumers who prefer a trademark owner's products might not find it worth the trouble to continue searching for the trademark owner's site.
Not every metatag use of another company's trademark is trademark infringement. When the mark is used only to describe a company's goods or services, or their geographic origin, this is permitted under trademark law as a fair use.
Conclusion
If people associate a corporation's trademarks with quality products, the public will seek out those products and other items bearing the company's trademarks. Without a strong trademark, a company is just one in a crowd manufacturing a commodity. If you select strong trademarks, maintain them, enforce them, and otherwise handle them properly, they may become your organization's most valuable assets.
For more information on trademark law, please see Douglas Case's "How To Maximize Trademark Value as a Corporate Asset".
Claire is an intellectual property attorney who has practiced in the areas of trademark, copyright, unfair competition, and Internet law since 1992. She can be reached at [email protected].