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Internet Domain Names as Trademarks
The use of Internet domain names has generated a number of questions that directly pertain to trademark law. The question most commonly asked is whether a term, which is a domain name, can also be registered as a trademark.
The quick answer is "Yes". An Internet domain name that is used to identify and distinguish the goods and/or services of one person, from the goods and/or services of all others, and is also used to indicate the source of the goods and/or services may be registered as a trademark providing it satisfies all the other rules for registration.
In order to register an Internet domain name, an applicant must show that he offers services via the Internet. Further, specimens submitted in support of the application must show use of the Internet domain name as an identifier of the source of the goods and services. The use of an Internet domain name merely as a directional reference, similar to the use of a telephone number or business address is used on stationery, business cards, or advertisements, is not use of the name as a source identifier.
Recently, the PTO clarified how it administratively classifies services associated with the World Wide Web. The PTO uses the phrases "connection" provider, "access" provider, and "content" provider to differentiate and classify services rendered via the Internet. A telephone company, or similar entity, providing the technical connection needed for communication is a "connection" provider -- a service classified in Class 38 (Telecommunications). The closely-related service rendered by entities such as America Online®, CompuServe®, Prodigy® or your local "Internet Service Provider" (ISP), is that of an "access" provider -- a service classified in Class 42 (Computer Service). An "access" provider furnishes "multiple-user access to a global computer information network."
If you are not an Internet Service Provider or a Telecommunications company then you are a "content" provider who furnishes information via the Internet, i.e., offers the service of providing information. In such cases, the service offered is an information service classifiable according to the information, e.g., a service that offers business information is classified in Class 35, a service that offers financial information is classified in Class 36, and a service that offers building construction, repair or maintenance information is classified in Class 37.
However, all "content" providers do not offer register-able services vis-ŕ-vis an Internet domain name. For example, Internet domain name locations that simply contain advertisements or other information normally expected or routine in promoting an entity's goods or services are not register-able services. Therefore, Internet domain names must meet the same requirements for registration as all trademarks and service marks. If a domain name does meet these requirements, it will be registered.
How to use a domain name correctly
As a "content" provider you can acquire trademark rights in your domain name if you use the domain name as a trademark and not merely as an address. In order to do this the first step you must take is to accept as a fact the following statement.
Lets start by clearly understanding what it is that needs to be protected. To demonstrate the point we will use our URL. Our web site address is http://www.arvic.com. You will notice that every one of our pages has an ARVIC logo. Our domain name is "arvic.com". We want to protect, as a trademark, the word ARVIC as it is used in association with the services offered from this web site.
In order for a web site to qualify for protection it must provide services to others. Simply providing an order entry screen, technical support or product information is not a service you are providing for others but rather a service you are offering for your own benefit. On the other hand; the providing of advice, or how to information is a service to others. By way of example. The ARVIC site accepts orders for products and services. This is self serving. In addition the web site also provides (a) guides on starting your own business; (b) how to articles, (c) links to other sites, (d) an FAQ section, (e) a list of government sites and their URL addresses, (f) a greetings section, etc. These sections of our web site provide helpful information that others can access and derive a benefit. They are not self serving.
If your site announces when your representatives will be in a specific location, offers a guest book, provides examples of how to use something, shows samples of things accomplished by your clients, includes a list of things your clients can do on their own or offers helpful hints and suggestions then you are providing services to the public and thus your use of the domain name is protectible.
Pursuant to the trademark rules of every country no one will be granted the exclusive rights to use, as a trademark, any word or phrase that clearly describes some character, feature or trait of the services marketed in association with the domain name regardless of the fact it is not registered as a trademark. The ".COM" (dot com) portion of your domain name is a character or trait. You can never own this feature.
PROPER USE OF A DOMAIN
The main way to prevent a mark from becoming public property is to show that the mark is not merely descriptive of your company's services. It is your badge of distinction and not the name for the service. Here is a collection of rules for you to follow.
If you decide to create a "family" of domain names, and to establish overall protection which is greater than the sum of the parts, follow as many of the following practices as possible:
These guidelines should be distributed to and followed by all of your employees. To protect your domain names value and keep it alive, it is critical that it be used CORRECTLY. Your failure to observe these rules will result in your inability to defend your domain name if challenged by a trademark holder. In other words, "If you do not follow these rules chances are someone will be successful if they sue you."
If you want the world to know that a specific domain name is yours then you must give PUBLIC NOTICE of the fact that you have adopted and are using the domain name, as well as all the icons and gifs on the web site, as trademarks. Using at least one of the following notice formats on every new page within your URL is public notice of that fact. In the alternative use one of the notice examples for each trademark used in a prominent place at the top or bottom of every new page.
First - If you own
As an alternative, or in addition to the use of the symbol, give public notice at or near the bottom of the page where the marks are displayed. For marks registered in the USA us the phrase "Registered in the U.S. Patent and Trademark Office" or the abbreviated version "Reg. USPTO." For marks registered in Canada use the phrase "Registered in the Canadian Intellectual Property Office " or the abbreviated version "Reg. CIPO."
Second - Unregistered
("Common Law") Trademarks
Third - Exceptions.
When a number of trademarks are used within the same page, a notice such as the following, may be used;
It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in comparison advertising.
MANAGEMENT AND RECORD
Evidence of First Use
of your Domain Name
Make sure all your employees -- from the mail clerk to chief executive, and particularly all marketing, advertising, packaging, and secretarial employees -- know what trademarks you are using and how to use them correctly. Experience shows that a printed trademark policy generally does not provide sufficient reminders unless supplemented with periodic meetings.
Make sure any outside advertising or public relations firms you retain know what trademarks you are using and how to use them. Review all advertising and promotional copy for correct and most effective trademark usage.
Your trademark coordinator should collect information on infringement and misuse, and consider (with the advice of your attorney) whether a demand letter should be sent or other action taken. Employees should not take action on their own if they detect misuse or infringement.
Once your domain name is registered as a trademark your certificate of registration is evidence of ownership as of the date on the certificate. From that date forward you are not required to prove you used the mark as of a particular start date. However, you may be required to prove that the mark is still in use. To prove the mark is still in use you should maintain at least a two year record of all of the above.
The next and last step
We trust, now that you have read this article, that you will come to the conclusion that you should include a trademark specialist on your list of professional advisors. The staff at ARVIC, welcome the opportunity to be your advisor. If this article has left you with any unresolved questions then we ask that you direct them to us. We further ask that you take the time to learn all about ARVIC, who we are, what we can do for you and why you should retain our firm.
Victor G. Arcuri, President Arvic Search Services Inc., Registered Trademark Agents and Corporate Paralegals since 1982; Across North America Toll Free: 1-888-227-8421
Arvic Search Services Inc.
Suite 260, 2323 - 32 Ave. N.E. Calgary, Alberta Canada T2E 6Z3
Phone: 403-234-0844 Toll Free: 1-888-227-8421 Fax: 403-294-0944 or Email Us