Re: protecting a domain name

On Mon, Mar 22, 1999, Kerry L. Konrad <k_konrad[_at_]stblaw.com> wrote:
>
> Regarding TM registration of a second-level domain name, isn't there
> some question whether the PTO will accept the use as qualifying? I
> know that there were some problems with it at one time, if the name
> wasn't the same as the non-Internet trade name or if all you were
> trying to register was the same name plus ".com." The contention
> was that the domain name was an address for communications, not an
> identifier of the source of goods or services. Maybe others have had
> more recent, favorable experiences.

Everything depends upon how the mark (as applied for) is actually used in commerce.

If you are using TRADEMARK as a trademark, it can be registered as a trademark.

If you are using TRADEMARK.COM as a trademark, it, too, can be registered. If, however, you are using TRADEMARK as your trademark, and TRADEMARK.COM as nothing more than an Internet address, the Trademark Office will likely deny registration.

Use as a domain nme alone is not sufficient to establish trademark use. Amazon.com and Disney.com are domain names that are also trademarks. perkinscoie.com and cni.org, in my view, are not (so far, anyway).

Bob Cumbow
cumbr[_at_]perkinscoie.com
206-583-8566 Received on Tue Mar 23 1999 - 16:34:51 GMT