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WHAT’S IN A NAME? 

There´s a lot of confusion out there about trademarks, service mark, and domain names. Here´s a roadmap to understanding how each work.

There's a lot of confusion out there about trademarks, service mark, and domain names. Here's a roadmap to understanding how each work.

What's a trademark?
A trademark is a word, drawing, or design that identifies a product or service (we'll call the words, drawings and designs "marks"). The term "trademark" is used to generically for marks used to identify a product (trademark or trade mark) and marks used to identify a service (service mark). If you think the world of trademarks doesn't apply to art, think again. Could anyone paint a painting and call it a "Picasso?" Not on your life. Trademark law is all over the art world from the entertainment industry to writing to the visual arts.

First Come, First Serve
You get a trademark by being the first one in your industry to use a particular mark to identify your product or service. In order for a mark to become a trademark, the mark has to be "used in commerce." This means you have to do business under the name. You can't just name the product and leave it sitting in your studio.

Contrary to popular notions, it doesn't matter whether the trademark is registered. You don't have to register a mark to have protection under trademark law. Some guy can register a name with the Patent and Trademark Office, but if you've been using the name in commerce and you guys are in the same industry, you can prevent him from ever using the mark even though it's registered. Of course, if the name has never been used in commerce, you can't enforce your rights to the trademark even if you're in the process of registering it!

What we're trying to prevent here is the usual scenario. The usual scenario goes something like this. Someone says, "I'll register a bunch of names as trademarks, then someone will have to pay me big bucks to use them." It doesn't work that way. Trademark law is written to prevent people from gobbling up a bunch of marks that they never use. Use it or lose it. That's the rule.

Don't Confuse Me
A trademark is used as a way to distinguish your product or service from someone else's product or service. Trademark law protects you from having someone else piggyback on your hard work. If you design and build something, you deserve to benefit from it. If someone comes along and labels their product like yours so as to confuse the public into thinking it is your work, the law steps in to prevent this.

Brand Name Recognition
Here's the catch. Your trademark has to be distinctive to protect you. The trademark has to be original or it has to be a name that everyone identifies with your product. So, if you come up with the name "Fast Skates" for skates and someone else starts using "Fast Skates" for their skates, chances are very good that you can't stop them from using the name even if you used it first. The term "Fast Skates" merely describes the product. It's not original. It's not distinctive.

If you name your skates "Avocado 220s," on the other hand, you're going to get immediate protection. The name is totally arbitrary and highly original and does not describe the product (you're not selling avocados, after all, you're selling skates).

What about all those famous brand names that describe the product like "Mr. Kleen"? Pour enough money into marketing a product and the public will identify it solely with your product. At that point, it has become distinctive and you have strong trademark protection under the law. That's the only exception.

The Little ® of Registration
You can register your trademark with state and federal trademark registries. The big one is the federal Patent and Trademark Office. If you're able to register you trademark, you get the benefit of a presumption that your trademark is valid over all others. However, it is just a presumption. Someone can still prove they used the trademark first and therefore have superior rights to it.

People register their trademarks to put the world on notice that they mean business with their product's name. The little ® communicates to the public that the owner values the name and believes it's worth protecting. However, remember, just because your name is registered doesn't mean you'll be able to win in court. A court can still find your trademark is merely descriptive and therefore not protectable or that someone used it before you.

The Right Approach

1. Do a Trademark Search
If you're going to dump a lot of money into marketing a product's name, you'd better do a trademark search before you give it a name. You could spend millions of dollars marketing your product to find someone's been using the name for years. The previous owner can make you stop using your trademark even if the public identifies the name with your product exclusively. The name doesn't have to be the exact same either. It just has to be close enough to confuse the public.

Checking the Patent and Trademark Office's trademark registry is not enough, though it's a good start (and it's free). Lots of trademarks are not registered. Furthermore, most people don't know how to properly search the database. If you're going to do a trademark search on the Patent and Trademark Office's database, take the time to read their materials and learn how to search correctly.

You should also check the state trademark registries. There are online services that allow you to conduct a search for a fee. You may be able to apply to each state to do the same but this is probably not cost effective. Still, even if you've checked the state registries, this is not enough. Lots of trademarks are not registered. Therefore, you need to check as many different business names as possible. Search the web, do business database searches, search comprehensive yellow pages. Look for your name in as many resources as possible, particularly ones that are in your same industry. Whether you do it yourself, or have a service do it for you, the best you can do is minimize your risk. There will always be the chance that someone in Podunk was using the name before you. Your job is to do the best search possible to make minimize that chance.

2. Choose a Distinctive Name
Choose a name that will have protection from the get-go. Choose an original name, one that does not describe the product (or service as the case may be).

3. Use the Name in Commerce
Use the name to sell your product or service. It's first come, first serve here. If you sit on the name, someone else will be able to gain superior rights to the name.

4. Register the Name if You Plan to Spend Lots of Money on It
Do the cost benefit analysis here. If you're going to spend a great deal of money on marketing this product or service, it may be worth registering the name. If you plan to police the name and try to prevent others from using it, you're going to want to register it.

Domain Names
A domain name is an address. It is a name someone types into their browser to find your web site. It's also called your URL ("Uniform Resource Locator").

.Com, .Net, .Org
Domain names come with different endings. The most common are .com, .net, and .org. But, there are a whole host of other suffix's such as .tv and .gov. They all do the same thing. If you type a name into the browser, it pulls up the owner's web site. The different suffix's are a way to expand the number of names available on the Web, much like area codes do for telephone numbers.

Registration
You have to register your domain name on the central ICANN registry to "own" it. It's really more like renting. You pay a fee to "own" the name for a specified amount of time, generally a year or two. At the expiration of that time, you have to renew your registration and pay a renewal fee or you lose the name.

To register a domain name, you need to do the following:
1. Check to see if your name is taken,
2. If .com is taken, is .net or .org or others? What are some back-up names?
3. Once you've found a name you want that is not taken, enter your registration information and send it.
4. You should receive an e-mail confirming the registration (keep in mind that every company that registers domain names does it different). At that point you "own" it for the specified amount of time. It's actually possible for two people to register the same name at the same time. You can't depend on your ownership until you've received notification that it's registered on the ICANN registry in your name.

You may want to register your name for more than a year out of convenience as renewals come up quick. Furthermore, if your domain name embodies your trademark or if you plan to market your web site on a large scale, you may want to register more than one suffix such as .com, net, and .org to avoid confusion and to prevent arguments with others down the road (no-one else can use it if you own it). However, this is not a necessity.

Do You Need .Com?
You do not need to have a .com name. All the suffix's work the same. Com is simply what people are accustomed to at this time. But, if you market your name effectively, the other suffix's work just as well.

Finding the Right Domain Name
You may find hunting for a domain name frustrating. Domain names are traded on the Web like precious metals are traded, as a commodity. People buy them and then attempt to resell them at higher prices. Thus, many names are already taken, especially .com names. Hang in there and keep searching. You'll eventually find a name that will suit your enterprise.

Where Does Trademark Come In?
Your domain name can have your trademark in it, like cocacola.com. It's now common knowledge in legal circles that you should not register a domain name that contains someone else's trademark. You run the very real risk of trademark infringement.

Some people have registered their domain names with the federal Patent and Trademark Office as a trademark. So, instead of registering the name Coca Cola, for example, they register cocacola.com. A more effective trademark strategy, perhaps, is to still register the actual name, Coca Cola, instead of registering the domain name as a trademark. However, you need to take your own circumstances and marketing plans into consideration when deciding these issues.

Do You Need a Domain Name?
If you want a web presence, you need a domain name. Owning your own web site is prudent if you plan to do business or marketing on the Internet.